WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bytedance Ltd. v. Protection of Private Person / Andrei Getman

Case No. D2020-2314

1. The Parties

Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is Protection of Private Person, Russian Federation / Andrei Getman, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <ru-tiktok.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2020. On September 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

On September 15, 2020, the Center sent an email communication to the Parties, in English and Russian, regarding the language of the proceeding. The Complainant requested English to be the language of the proceeding on September 16, 2020. On September 15, 2020, the Respondent requested Russian to be the language of the proceeding.

The Center sent an email communication to the Complainant September 15, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 16, 2020.

The Center verified that the Complaint together with amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. Respondent sent several informal email communications to the Center on September 16, 2020, September 22, 2020 and September 25, 2020.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on October 26, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Bytedance Ltd. (“Complainant”, together with its subsidiary, TikTok Information Technologies United Kingdom Limited, is the owner of trademark registrations for TIK TOK across various jurisdictions, including Russian Federation and Ukraine (see table below). These trademark registrations demonstrate that Complainant has spent a considerable amount of time and money protecting its intellectual property rights.

Complainant is an Internet technology company that enables users to discover a world of creative content platforms powered by leading technology. It owns a series of content platforms that enable people to connect with consuming and creating content through machine learning technology, including Toutiao, Douyin, and TikTok.

TikTok is Complainant’s platformor application (“app”) for its video-sharing social networking service. TikTok was launched outside China in May 2017 and became the most downloaded application in the United States in October 2018. TikTok is very popular and is the 299th most popular website in Russian Federation.

TikTok allows users to create vertical videos that typically run for 15 seconds before looping to restart, and connect clips together to create videos up to 60 seconds long. The videos incorporate music samples, filters, quick cuts, stickers and other creative add-ons that allow users to make the most of the short length. TikTok is available in more than 150 different markets, in 75 languages, and has become the leading destination for short-form mobile video. TikTok has global offices including Los Angeles, New York, London, Paris, Berlin, Dubai, Mumbai, Singapore, Jakarta, Seoul, and Tokyo.

The disputed domain name was registered on December 3, 2019.

5. Parties’ Contentions

A. Complainant

a) Identical or confusingly similar

By virtue of its trademark registrations, Complainant is the owner of the TIK TOK trademark. The Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.2.2: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”

It is standard practice when comparing a disputed domain name to Complainant’s trademark, to not take the extension into account.

The disputed domain name incorporates Complainant’s TIK TOK trademark in its entirety (minus the space) while merely adding the geographically descriptive term “ru” (common abbreviation of Russian Federation) to such trademark, thus rendering the disputed domain name confusingly similar to this trademark.

It is well established that the addition of a geographic term or place name does not alter the underlying trademark or negate the confusing similarity, and numerous UDRP panels have established that the mere addition of geographical terms to a complainant’s trademark does not sufficiently differentiate the disputed domain name from that trademark.

Moreover, Respondent’s use of this particular geographically descriptive term in conjunction with Complainant’s trademark only serves to underscore and increase the confusing similarity between the disputed domain name and Complainant’s trademark as this specific term is closely linked and associated with Complainant. More specifically, Complainant’s TikTok app is a craze among young people in Russian Federation, and is equally popular as other major social networks (Facebook, Twitter and YouTube) in Russian Federation.

Respondent’s addition of a hyphen between the geographically descriptive term “ru” and Complainant’s TIK TOK trademark does nothing to distinguish the disputed domain name from Complainant’s trademarks.

Based on the foregoing, Complainant considers that the disputed domain name is clearly confusingly similar to Complainant’s TIK TOK trademark.

b) Rights or legitimate interests

Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, Complainant has not given Respondent license, authorization or permission to use Complainant’s trademark in any manner, including in domain names.

Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests.

In the instant case, WhoIs information identifies the Registrant as “Registrar of Domain Names REG.RU LLC”, which does not resemble the disputed domain name in any manner. Thus, where no evidence, including WhoIs record for the disputed domain name, suggests that Respondent is commonly known by the disputed domain name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

At the time of filing the Complaint, Respondent was using a privacy WhoIs service, which past UDRP panels have also found to equate to a lack of legitimate interest (See, for example, Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No. D2011-1855, where the panel concludes “that the Respondent possesses no entitlement to use the name or the words in the Complainant’s marks and infers […] from the ‘Private Whois’ registration that it is not known by such name. There is no evidence of the Respondent ever being commonly known by the name or words now included in the disputed domain name.”)

Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain name. The disputed domain name directs Internet users to a website, which provides an online magazine or resource for TikTok users in Russian Federation, including a variety of instructions, tips and additional support, and the nature of the disputed domain name, the presence of Complainant’s musical note logo on the website, and the website’s commercial activity suggest that Respondent cannot claim nominative fair use of the disputed domain name.

The disputed domain name consists of Complainant’s TIK TOK trademark (minus the space) plus a geographical term, which effectively impersonates or suggests sponsorship or endorsement by Complainant (see section 2.5.1 of WIPO Overview 3.0).

The disputed domain name resolves to a website “www.ru-tiktok.com prominently displaying Complainant’s logo on the website and using this logo as a favicon. Such inclusion of Complainant’s logo are direct efforts to take advantage of the fame and goodwill that Complainant has built in its brand, and Respondent is not only using the confusingly similar disputed domain name, but is also imitating Complainant by displaying Complainant’s logo. This imitation is referred to as “passing off”, and the Respondent, in using a confusingly similar domain name to mislead Complainant’s customers, is not making a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use of the domain name pursuant to paragraph 4(c)(iii) of the Policy.

Respondent also uses its website to collaborate with advertisers by allowing these advertisers to post banner ads for a profitable affiliate percentage and promotional materials in the form of informational articles for a fee. Some of these ads or promotional materials include links to third-party websites, such as “https://likemania.com/”. This particular website offers fake likes to TikTok users, which is contrary to TikTok’s Terms of Service (“https://www.tiktok.com/legal/terms-of-use?lang=en”). Thus, it is apparent that Respondent has intentionally registered the disputed domain name for the purpose of making illegitimate or unfair use of Complainant's trademark by misleading Internet users who are seeking information about Complainant, and as a pretext for commercial gain (see section 2.5.3 of WIPO Overview 3.0).

For the reasons set out above, Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.

c) Bad faith registration and use

Respondent registered the disputed domain name on December 3, 2019, which is after Complainant filed for registration of its TIK TOK trademark in accordance with the table of trademark registrations cited above and after Complainant’s first use in commerce of its trademark in 2017. The disputed domain name’s registration date is also after the Complainant obtained its <tiktok.com> domain name in 2018.

Complainant and its TIK TOK trademark are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using this trademark since 2017, which is well before Respondent’s registration of the disputed domain name on December 3, 2019.

By registering a domain name that incorporates Complainant’s TIK TOK trademark (minus the space) and adds the geographically descriptive term “ru” and a hyphen to the beginning of the this trademark, Respondent has created a domain name that is confusingly similar to Complainant’s trademark, as well as its <tiktok.com> domain name. As such, Respondent has demonstrated knowledge of and familiarity with Complainant’s brand and business. Further, the disputed domain name resolves to a website that features Complainant’s TIK TOK trademark and musical note logo while allegedly providing online resources for TikTok users in Russian Federation. The Complainant submits that, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” Complainant’s brands at the time the disputed domain name was registered (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Furthermore, at the bottom page of the disputed domain name’s website, Respondent included a disclaimer in small fonts: “The site is for informational purposes only and does not claim the rights of the official site ‘www.tiktok.com’". The presence of this disclaimer on the disputed domain name’s website makes it abundantly clear that Respondent knew of Complainant when registering and using the disputed domain name, and that Respondent selected the disputed domain name to intentionally confuse unsuspecting Internet users into visiting its website. In other words, Respondent acknowledges the likelihood of confusion with Complainant by voluntarily placing a disclaimer on the website.

As such, it must be held that Respondent has intentionally misappropriated Complainant’s trademark as a way of redirecting Internet users searching for Complainant to the disputed domain name’s website, only to then offer a disclaimer and content not approved by Complainant. This sort of tactic – labeled “bait-and-switch” for its propensity to confuse Internet users into believing that they are visiting a complainant’s site - only to discover that the disputed domain name is completely unconnected to that complainant - has been held to be evidence of bad faith registration and use by past UDRP panels.

Respondent creates a likelihood of confusion with Complainant and its trademarks by registering a confusingly similar domain name and then using it to host a website displaying Complainant’s TIK TOK trademark and logo in a brand-like manner, with Respondent then attempting to profit from such confusion by offering commercial spaces for advertisers. As such, Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The impression given by the disputed domain name and its website would cause consumers to believe Respondent is somehow associated with Complainant when, in fact, it is not. Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, and Respondent is thus using the fame of Complainant’s trademarks to improperly increase traffic to the website listed at the disputed domain name for Respondent’s own commercial gain.

The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy, with no good faith use possible. More specifically, where the disputed domain name includes Complainant’s TIK TOK trademark (minus the space) and adds the geographically descriptive term “ru” and a hyphen to the beginning of the trademark, there is no plausible good-faith reason or logic for Respondent to have registered the disputed domain name. “The only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith” (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past panels have held serves as further evidence of bad faith registration and use (see section 3.6 of WIPO Overview 3.0: “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).

Finally, it is Complainant’s accession that on balance of the facts set forth above, it is more likely that the Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

Respondent submitted several informal email communications in the matter, but did not reply to Complainant’s contentions concerning the three elements of the Policy.

6. Discussion and Findings

The Panel finds that Respondent was given notice of this proceeding in accordance with the Rules both in Russian and English language.

However, Respondent failed to file a formal response to the Complaint and has not sought to answer to Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that Respondent has been given a fair opportunity to present his case and finds no exceptional circumstances why it could not do so; and the Panel will proceed to the decision based on the Complaint in accordance with paragraph 5(f) of the Rules.

Complainant must prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must prove that the three following elements are satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) disputed domain name was registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from Respondent’s failure to reply to Complainant’s assertions, and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon Complainant’s assertions and evidence and inferences drawn from Respondent’s failure to reply.

A. Language of the Proceedings

The Registrar has confirmed that the language of the Registration Agreement is in Russian.

Paragraph 11(a) of the Rules states that the language of the proceeding shall be the language of the Registration Agreement subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Respondent has requested the language of the proceedings to be in Russian.

Complainant has requested that the language of proceedings be in English and provides the following supporting arguments and evidence:

(a) Complainant is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings and adjudication of this matter;

Such additional delay, considering the obviously abusive nature of the disputed domain name and its website (Respondent has registered an identical or confusingly similar domain name to Complainant’s TIK TOK trademark and is using the website found at the disputed domain name to pass off as Complainant), poses continuing risk to Complainant and unsuspecting consumers seeking Complainant or its products or services;

(b) The disputed domain name is comprised of Latin characters “ru” and “tiktok”, which presumes that Respondent has some understanding of the English language;

(c) The term “tiktok”, which is the dominant composition of the disputed domain name, does not carry any specific meaning in the Russian language;

(d) in light of Respondent’s use of the disputed domain name and Respondent’s decision to register a domain name that misappropriates the famous TIK TOK trademark and brand, it would unduly burden Complainant to have to arrange and pay for translation where Respondent has demonstrated behaviour that disrupts Complainant’s business and has already required.

In light of the above and having considered all circumstances of this case, the Panel finds that there is evidence showing that Respondent is familiar with the English language.

Therefore, Panel proceeds to a decision in English.

B. Identical or Confusingly Similar

Complainant has registered the trademark TIK TOK worldwide from 2018. Complainant submits that the disputed domain name is identical or confusingly similar to its trademarks. The disputed domain name incorporates the trademark TIK TOK in its entirety with the difference being that these two elements have been joined in one word, and adding the short term representing the geographical area of Russian Federation “ru”.

The Panel refers to consistent practice and past UDRP decisions, which confirm that incorporating a trademark in its entirety with addition of other terms does not negate a finding of confusing similarity. It was specifically highlighted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) where in section 1.8 it states that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The addition of generic terms or dashes or hyphens does not differentiate the disputed domain name from the registered trademarks.

In the Panel view, the disputed domain name is confusingly similar to TIK TOK trademarks, which is reproduced in its entirety and is clearly recognizable within the disputed domain name.

Adding the abbreviation “ru-” (with a hyphen) does not prevent a finding of confusing similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark TIK TOK.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy as the first element of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

A respondent may show its rights or legitimate interests, by producing evidence to support the circumstances under paragraphs 4(c) of the Policy.

By not responding to Complainant’s contentions, Respondent in this proceeding has not attempted to demonstrate his rights or legitimate interests.

The Panel further notes that there is no evidence that before notice of the dispute, Respondent was using the disputed domain name for a bona fide offering of goods or services.

According to Complainant, the website at the disputed domain name is in the Russian language and is used to create an association with the Complaint and its Internet creative platforms products by using Complainant’s trademark and its musical note logo. Respondent provides an online magazine or resources for TikTok users in Russian Federation providing them with instructions, tips and additional support.

The described use of the disputed domain name, in the Panel’s view, does no prove that Respondent was involved in bona fide offering of goods or services in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

According to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 the use of a trademark as a domain name by an authorized or non-authorized third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy if the following conditions are satisfied:

(a) the respondent must actually be offering the goods or services at issue;

(b) the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

(c) the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and

(d) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

As Complainant submits, Respondent fails at least on two elements of the above test: firstly, Respondent does not offer goods or services on his website; and secondly, Respondent does not use the website to actually sell the trademarked goods.

In addition to that Respondent makes a false pretense by using Complainant’s materials, trademark and musical note logo that he has authority to do so on his website.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that Respondent has been commonly known by the disputed domain name.

The Panel recalls that Respondent registered the disputed domain name in 2019; this is after the Complainant registered its distinctive TIK TOK trademark in 2018. The TIK TOK trademark and Complainant’s activity are well-known and highly recognized within its industry.

There is no further evidence that Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. Moreover, Respondent is using the disputed domain name with the purpose of gaining profit or other business advantage. Therefore, paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds Complainant has established its prima facie case to show that Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by Respondent, and, accordingly, Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy as the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with Respondent’s knowledge of Complainant’s trademarks, worldwide activity and reputation.

Complainant’s first use and first registration of TIK TOK trademarks predate any use Respondent may have made of the disputed domain name. The disputed domain name was registered in 2019, after the Complainant’s first use and registration of its TIK TOK trademarks. The website at the disputed domain name allegedly offers Russian news, advice and support for the app users. It is the Panel’s view, under the present circumstances, that Respondent more likely than not registered the disputed domain name with full awareness of Complainant’s trademark as well as the goodwill associated with it.

It is clear in the Panel’s opinion that in the mind of an Internet user, the disputed domain name could be directly associated with Complainant’s trademarks, which is likely to be confusing to the public as suggesting either an operation of Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

Further, Respondent has never been granted permission to register the disputed domain name. Respondent takes advantage of the TIK TOK trademarks by intentionally attempting to attract visitors to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or a product or service on the Respondent’s website.

The Panel finds that Respondent’s registration and use of the disputed domain name shows Respondent’s intent to rely on a risk of confusion with Complainant’s activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and the website associated with it.

This conduct has been considered as bad faith under the Policy, as in Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, in which the panel stated: “It follows from what has been said about legitimacy that the panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”

These findings, together with the finding that Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by Respondent in bad faith.

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith and, accordingly, Complainant has satisfied the requirements of paragraph 4(b) of the Policy as the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ru-tiktok.com> be transferred to Complainant.

Irina V. Savelieva
Sole Panelist
Date: November 28, 2020