The Complainant is Scribd, Inc., United States of America (“United States”), represented by IPLA, LLP, United States.
The Respondent is Ma Thien Lieu, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2021, 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. The Center sent an email communication to the Complainant on April 12, 2021 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 amendment to the Complaint on April 12, 2021. The Center verified that the Complaint together with the amendment to the 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 April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2021. The Center appointed Miguel B. O’Farrell, as the sole panelist in this matter on May 19, 2021. 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 The Complainant, Scribd, Inc, is in the business of computer, electronic and software related goods and services, and owns several trademark registrations for SCRIBD, including the following: United States trademark registration SCRIBD No. 3,777,227, filed on August 3, 2009 and registered on April 20, 2010 for goods and services in classes 9, 35, 38, and 42, and United States trademark registration SCRIBD No. 5,898,302 filed on July 3, 2018 and registered on October 29, 2019 for goods and services in classes 9, 35, and 42. Copies of the Certificates of Registration of the above-mentioned trademarks together with the Complainant’s worldwide trademark docket report are attached to the Complaint. The Complainant owns the domain name The disputed domain name Since 2007, the Complainant has served over 1,000,000 paying subscribers and has over 100,000,000 unique visitors per month on its website “www.scribd.com”. The Complainant is the 22nd most downloaded application in Apple’s App Store under Books, with over 23,000 reviews and 4.4 rating. On Google Play, the Complainant’s App has over 523,000 reviews and a 4.4 rating overall. The Complainant claims that the disputed domain name is confusingly similar with the trademark SRIBD in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith. More specifically, the Complainant is not aware that the Respondent has trademark or any other rights relating to SCRIBD, nor has the Complainant ever authorized the Respondent to use its SCRIBD mark in connection with any goods or services. Furthermore, nothing suggests that the Respondent is commonly known by the disputed domain name. The Respondent’s use of the disclaimer and examples that specifically target the Complainant prove that the Respondent was aware of the Complainant’s trademark SCRIBD and uses it in bad faith to intentionally attempt to extort money or to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s SCRIBD mark as to the source, sponsorship, affiliation or endorsement of the website. Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has proved that it has rights in the trademark SCRIBD. As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The disputed domain name consists of the Complainant’s SCRIBD mark, the word “full” and the generic Top‑Level Domain (“gTLD”) “.com”; the Complainant’s mark being the distinctive and prominent element of the disputed domain name. Neither the word “full”, nor the gTLD “.com” suffice to avoid the confusing similarity between the disputed domain name and the Complainants’ SCRIBD mark. The Panel therefore finds that the disputed domain name is confusingly similar with the Complainant’s SCRIBD mark and that the conditions of paragraph 4(a)(i) of the Policy have been fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. There is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name. The disputed domain name has not been utilized in connection with a bona fide offering of goods or services as it does not offer any services or goods of its own, but rather manipulates the Complainant’s URL link to allow access to works that would only be accessible by paying for the Complainant’s subscription services. Likewise, and as further discussed under section 6.C of this decision, not only the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, but rather intends to use the disputed domain name to confuse Internet users and thereby deviate them from the Complainant’s website to its own website for the purpose of obtaining unfair monetary benefit. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith Complainant has submitted evidence, which proves that the trademark SCRIBD was widely used and registered many years before the Respondent registered the disputed domain name on October 29, 2020. Furthermore, the Complainant is the registrant and uses the domain name The website to which the disputed domain name resolves contains a rather unobtrusive disclaimer, which reads: “Scribdfull.com is not affiliated with any websites (such as scribd.com). We do not store any files of our servers; we just act as proxy to the targeted url.” Therefore, it is obvious that the Respondent knew of the Complainant’s trademark and website when it registered the disputed domain name containing the Complainant’s distinctive trademark SCRIBD. As set forth in section 3.7, second paragraph, of WIPO Overview 3.0, where the overall circumstances of the case point to the respondent’s bad faith, as it occurs in this case, the mere existence of a disclaimer cannot cure such bad faith and constitutes an admission by the Respondent that users might be confused. The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0). Finally, the Respondent is using the disputed domain name to redirect Internet traffic away from the Complainant and the subscription services it offers, which constitutes bad faith use. The Panel finds that the Respondent has registered and uses the disputed domain in bad faith, which means that the requirements of paragraph 4(a)(iii) of the Policy have also been fulfilled. 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 Miguel B. O’Farrell
Sole Panelist
Date: May 31, 2021
Full & Egal Universal Law Academy