The Complainant is Scribd, Inc., United States of America (“USA”), represented by IPLA, LLP, USA.
The Respondent is Ma Thien Lieu, Viet Nam.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 October 15, 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 October 18, 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 October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on December 2, 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 BackgroundThe Complainant is operating since 2006 in the business of computer, electronic, and software related goods and services. According to the evidence provided by the Complainant, starting 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 Application Store under Books, with over 23,700 reviews and 4.6 rating. On Google Play, the Complainant’s Application has over 544,000 reviews and a 4.4 rating overall.
The Complainant holds worldwide trademark registrations for SCRIBD, such as the following:
- the International Registration No. 1491187 registered on December 8, 2019, designating many countries worldwide and covering goods and services in International Classes 9, 35, 42 .
The disputed domain name
The parties were involved in one previous dispute, decided in the favor of the Complainant. See Scribd, Inc. v. Ma Thien Lieu,WIPO Case No. D2021-1077 regarding the domain name
The disputed domain name was registered in the course of the proceedings in the case Scribd, Inc. v. Ma Thien Lieu, supra.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to its SCRIBD trademark incorporating the mark with a slight ortographical alteration – the deletin of the letter “d” and the additional term “full”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Respondent was involved in a prior UDRP dispute decided against it.
The Complainant requests the transfer of the disputed domain name to it.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant holds rights in the SCRIBD trademark.
The disputed domain name incorporates the trademark SCRIBD mispelled, with the last letter “d” removed and with an additional term “full”.
In accordance with section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. UDRP panels view the first element as a threshold test concerning a trademark owner’s standing to file a complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.
Further, numerous UDRP panels have considered that the addition of other terms (whether geographical wording, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name or a domain name which consists of a common, obvious, or intentional misspelling of a trademark would not prevent a finding of confusing similarity for purposes of the first element. See sections 1.8 and 1.9 of the WIPO Overview 3.0.
It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complaiant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark SCRIBD, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
At the time of filing the Complaint, the disputed domain name resolved to a website allowing the Internet users to download content from the Complainant’s official platform by illicitly manipulating the Complainant’s url link, whereas the full access to the Complainant’s works would only by accessible by paying a subscription.
These are definitely not activities falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise. See section 2.2 of the WIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe Complainant holds trademark rights for SCRIBD since at least 2009.
The disputed domain name was registered in 2021, in the course of another UDRP proceeding involving the same parties, and incorporates the Complainant’s mark written with a minor ortographical alteration and together with the term “full”.
Having in view the above, the Panel finds that the disputed domain name was registered in bad faith, with knowledge of the Complainant, its business, and particularly targeting its SCRIBD trademark.
Further, as listed under section 4 above, the Respondent registered at least another domain name comprising the Complainant’s trademark and used it in a scheme virtually identical to that in this proceeding.
Paragraph 4(b)(ii) of the Policy lists the situation when the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Section 3.1.2 of the WIPO Overview 3.0 explains that a pattern of conduct may include a scenario where the respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.”
The UDRP panels have found the following types of evidence to support a finding that the respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelhood of confusion with the complainant’s mark: (i) the mere registration that is confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity; (ii) actual confusion; (iii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful; (iv) the lack of a respondent’s own rights to or legitimate interests in a domain name; (v) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer; (vi) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vii) absence of any conceivable good faith use. See section 3.1.4 of the WIPO Overview 3.0.
Given that the disputed domain name incorporates the Complainant’s distinctive trademark with a minor alteration and additional term, the corresponding website manipulates the Complainant’s URL link and diverts traffic from the Complainant’s website and the subscription services it offers to the Respondent’s website, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
Further, given the overall circumstances of the case, the mere existence of a disclaimer on the website under the disputed domain name cannot cure such bad faith, but to the contrary it proves that the Respondent was aware of the Complainant’s trademark and uses the disclaimer as an admission by the Respondent that Internet users may be confused. See section 3.7 of the WIPO Overview 3.0.
Also the Respondent refused to participate in the present proceedings in order to put forward any arguments in its favor. Having in view the other circumstances of this case, such fact constitutes further evidence of bad faith behavior.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
7. DecisionFor 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
Marilena Comanescu
Sole Panelist
Date: December 16, 2021