ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Scribd, Inc. v. Robert Brink, Host Master, 1337 Services LLC, Ly Tran, Oscar Enriquez, and Minh Le, Home Case No. D2022-3887 1. The Parties The Complainant is Scribd, Inc., United States of America ("United States"), represented by IPLA, United States. The Respondents are Robert Brink, United States of America, Host Master, 1337 Services LLC, Saint Kitts and Nevis, Ly Tran, Viet Nam, Oscar Enriquez, Spain, and Minh Le, Home, Viet Nam. 2. The Domain Names and Registrar The disputed domain name
is registered with URL Solutions, Inc., the disputed domain name is registered with Tucows, Inc., the disputed domain name is registered with NameCheap, Inc., the disputed domain name is registered with NameSilo, LLC, and the disputed domain name is registered with EasyDNS Technologies Inc. (collectively referred to as "the Registrars" and the "Disputed Domain Names"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2022 with regards the Disputed Domain Names and the domain name . On October 18, 25, 26, and 28, 2022, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On October 18, 19, 26, and November 2, 2022, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on November 2, 2022, providing the registrant and contact information for multiple underlying registrants disclosed by the Registrars, and inviting the Complainant to either amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control and indicate which disputed domain names will no longer be included in the current Complaint. The Center suspended the proceedings from November 7, 2022, to February 7, 2023, at the Complainant's request after receiving email communications from the registrant of the domain name on page 2 November 3 and 7, 2023. The Complainant filed a first amended Complaint on November 7, 2022, and requested the withdrawal of the domain name . On February 7, 2023, the Center confirmed it would not proceed in this case against the domain name and it would only continue the current proceeding regarding the Disputed Domain Names as of February 7, 2023. The Complainant filed a second amended Complaint on February 22, 2023, including comments on the consolidation of multiple registrants. The Center verified that the Complaint together with the amended Complaints 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 February 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2023. On March 4, 2023, the Center received an email communication from the registrant of , in which it agreed to cancel this Disputed Domain Name. The Center suspended the proceedings from March 14, 2023, to April 13, 2023, at the Complainant's request. The Center reinstituted the proceeding on April 13, 2023, at the Complainant's request. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 3, 2023. 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 is a Delaware, United States, corporation. Since 2007, it has served over 1.8 million paying subscribers and has over 200 million unique visitors per month to its official website at "www.scribd.com", which provides access to millions of ebooks, audiobooks, magazines, and podcasts. The Complainant's corresponding domain name, was registered on September 24, 2006. The Complainant states that its app is the 15th most downloaded in Apple's App Store under "Books" and has a 4.6 rating. On Google Play, the Complainant's app has over 10 million downloads and a 4.6 rating. The Complainant is the owner of a variety of trademarks for the word mark SCRIBD, including, for example, United States Trademark Registration number 3777227 for the word mark SCRIBD, registered on April 20, 2010, in International Classes 9, 35, 38, and 42. The Disputed Domain Names were registered as follows: was registered on May 9, 2022; was registered on August 9, 2021; was registered on November 20, 2020; was registered on April 29, 2016; and was registered on June 1, 2017. With the exception of , the websites associated with each of the Disputed Domain Names offer a "Scribd Downloader", on home pages in various styles under various website titles, whereby the Complainant's content controls may be circumvented. The website associated with contains a page probably referring to the installed webserver software, which merely states "Apache is functioning normally". page 3 5. Parties' Contentions A. Complainant In summary, the Complainant contends as follows: Consolidation All of the Disputed Domain Names are owned by a single individual or entity. They are hosted by similar IP addresses starting with 104.21 or 172.67 on Cloudflare. Domains hosted on the same IP address provide evidence that the domains are under common control. Four of the Disputed Domain Names, , , , and use email services provided by Gmail. Two of these, and , use six identical numbers in the email address while another provides a false name and an obscure email address. All the Disputed Domain Names, except , provide the ability to download the Complainant's copyrighted documents with similar URL manipulation technology and all the Disputed Domain Names utilize the term "scribd" or a shortened version such as "scr/scrib". In Scribd, Inc. v. Ma Thien Lieu, WIPO Case No. D2021-1077 (), Scribd, Inc. v. Ma Thien Lieu, WIPO Case No. D2021-3360 (), and Scribd, Inc. v. Ma Thien Lieu, WIPO Case No. D2022-1667 (), the Complainant prevailed against the single respondent, which offered similar content to the disputed domain names. The owner of said domain names then deleted one letter from "scrib" and/or "full" to give rise to the Disputed Domain Names and , in order to continue providing its services. Evidence of common registrants, common structure of domain names, common/shared registrars, and common redirects to a single website permits consolidation. Identical or confusingly similar The Complainant owns 38 trademarks for SCRIBD worldwide for a variety of computer, electronic, and software related goods. The Disputed Domain Names are nearly identical to said mark and incorporate said mark in its entirety or encompass a portion thereof. This case should be decided in accordance with the recent Scribd, Inc. v. Ma Thien Lieu, supra cases. The incorporation of a mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. The addition of descriptive terms such as "full", "down", "downloader", and "dl" and/or deletion of a few letters does not distinguish the Disputed Domain Names from the Complainant's marks. Previous panels under the Policy have found a likelihood of confusion where a mere addition or a minor misspelling of a complainant's trademark is insufficient to avoid confusion. Each of the Disputed Domain Names is identical or confusingly similar to the Complainant's marks because the Respondent merely deletes letters from SCRIBD and adds a descriptive term. Rights or legitimate interests The Disputed Domain Names were registered after the registration of the Complainant's marks and after the Complainant's website was operational. All of the Disputed Domain Names, apart from , currently provide their users with the ability to download content from the Complainant's platform without subscribing by acting as a proxy. They allow the Complainant's content to be downloaded without proper compensation. They are not being used in connection with a bona fide offering of goods or services and are likely to mislead consumers into believing that the Disputed Domain Names concerned belong to the Complainant. The Complainant is unaware of any trademark or other rights that the Respondent might have in the SCRIBD mark. The Complainant has not authorized the Respondent to use its mark. Nothing in the Respondent's WhoIs information suggests that the Respondent is commonly known by the Disputed Domain Names. page 4 Registered and used in bad faith The Complainant has been substantially, exclusively, and continuously using the SCRIBD mark since at least as early as 2006. The Disputed Domain Names were all registered subsequent to the Complainant's registration of said mark. The Respondent has offered its users the ability to avoid paying the Complainant's subscription fees via the Disputed Domain Names, apart from . Disclaimers and examples provided on all of the Disputed Domain Names apart from specifically target the Complainant and prove that the Respondent was aware of the Complainant when it registered the Disputed Domain Names. Use of a domain name in connection with a website offering goods and/or services competing with those of the complainant constitutes use of the domain name in bad faith. has no visible content apart from the "Apache is functioning normally" statement but the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. The Respondent's registration of multiple "scribd"-formative domain names is further evidence of its bad faith conduct. The previously disputed domain name and the Disputed Domain Name are linked and the website associated with the latter refers to the former domain name. The Respondent created the domain name three days after the Complaint was filed, with a view to ignoring the consequences by making a slight change to the domain name. In the case of , the Respondent has used a false registrant name (Host Master, 1337 Services LLC) which has been the subject of multiple findings of bad faith in previous cases under the Policy. The Respondent uses the Complainant's mark via the Disputed Domain Names to redirect traffic away from the Complainant and its subscription service and registered the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's SCRIBD marks as to the source, sponsorship, affiliation, or endorsement of the related websites. B. Respondent The Respondents did not reply to the Complainant's contentions. As mentioned above, the Center received an email from the Respondent connected to the Disputed Domain Name wherein the Respondent agreed to cancel the Disputed Domain Name. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Preliminary issue: Consolidation of Complaints against Multiple Registrants The Complainant has requested that its complaints be consolidated in respect of the Disputed Domain Names, asserting that these are under common control. Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. In a case where the holders of the domain names concerned have different names, consolidation may be appropriate where the particular circumstances of the case indicate that common control is being exercised over the domain names, or over the websites to which said domain names resolve, provided also that such consolidation would be fair and equitable to all parties and is procedurally page 5 efficient (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") and the cases cited there). Common control may be indicated where various commonalities are present among the domain names concerned. This may include shared registrant data, such as administrative or technical contacts, postal addresses, telephone numbers, or email addresses. A proximity in the dates of registration may be relevant. Equally, shared technical arrangements and configurations may be relevant, such as common webserver IP addresses, nameservers, registrars, or web hosting arrangements. Finally, commonalities of use indicating a sufficient unity of interests may be of significance, such as similar activities and designs among the websites associated with the domain names concerned. Where sufficient commonalities are found, the domain name holders concerned may essentially be treated as a single domain name holder for purposes of paragraph 3(c) of the Rules. In the present case, the Complainant has presented a variety of commonalities between the Disputed Domain Names, including similar IPV4 addresses in the first and second octets, web hosting arrangements using the same hosting provider, contact email addresses using the same email provider, and similar website uses to provide downloads of the Complainant's copyrighted documents. The Complainant also presents a number of commonalities which do not extend across the full range of the Disputed Domain Names, which will be discussed below. The Panel considers that similar IPV4 addresses in the first and second octets, on their own, would be insufficient to demonstrate common control. There are likely to be larger numbers of Internet users sharing this portion of an IPV4 address and what would be of greater significance would be if these happened to be in an IP address range owned by the same entity, a matter which the Complainant does not address. In any event, similarities in IPV4 addresses do not necessarily indicate common control. Such similarities may be found among completely independent domain name holders if they happen to have chosen the same hosting provider, something that is more likely to occur in the case of a very large hosting provider, as is the case here. Equally, there may be a wide variety of users of a public IP address in an Anycast network implementation, which would not necessarily indicate common control among those users. If there had been greater similarities across all of the IPV4 octets in the present case, this might have satisfied the Panel of a stronger connection between them. Nevertheless, the fact that all of the Disputed Domain Names use the same hosting provider could help to establish a more modest link in the chain provided that additional correspondences can be found. The Complainant asserts that there is significance in the fact that all the Disputed Domain Names use the same email provider for their contact email address, namely Gmail. This must be contrasted with a case where there is either the same or a similar email address (in its entirety) shared across the domain names as a whole. Again, where the service provider is very widely used by entities with no relationship to one another, the fact that all the Disputed Domain Names are using that provider could not be said to be of much significance unless supported by additional similarities. The Complainant finds a further point of correspondence in the use to which the websites associated with the Disputed Domain Names have been put, other than . Each offers some form of "Scribd downloader". However, that aside, there is little similarity in appearance between the websites. Furthermore, there is neither any identity in the registrars of record nor any notable proximity in registration dates. Indeed, the Disputed Domain Names were registered across a considerable range of dates extending between 2016 and 2022. Despite some weakness in the Complainant's contentions on this topic, discussed above, the Panel has nevertheless noted sufficient commonalities among most of the Disputed Domain Names which support its assertion of common control. For example, and use exactly the same numeric string in the contact email address, preceded by the same name structure - a first name and surname separated by a dot. The names themselves, although different, appear to be both of Vietnamese origin. This latter point also serves to link in , which uses web hosting and email services from page 6 the same providers, and features a Vietnamese postal address in Ho Chi Minh City, Viet Nam, as does the postal address related to (although the addresses differ in other respects). The Complainant speculates that the Disputed Domain Names have a connection to three previous cases cited by the Complainant noted above (each Scribd, Inc. v. Ma Thien Lieu, supra) and the Panel can see the possible link here at least in the case of and . The domain names in those three cases likewise appear to have had a Vietnamese link, in that the respondent was based in Viet Nam. The website associated with the Disputed Domain Name references the name "scribful", which matches , the subject of Scribd, Inc. v. Ma Thien Lieu, WIPO Case No. D2022-1667. Equally, although there is no similarity in registrant name or postal address, it has to be noted that the email address for uses the Laotian country code, despite the registrant allegedly being based in Saint Kitts and Nevis, and the Panel cannot overlook the fact that that Laos is a country bordering Viet Nam. In addition to the correspondences noted above, there are links within the composition of the Disputed Domain Names themselves in that two pairs of these have a similar structure. and each contain an abbreviation representing "download" preceding "scrib(d).com", namely "down" and "dl". Likewise, and each use the term "full" preceded by "sc" and "scr". In conclusion, the Panel considers that it is possible to link four of the Disputed Domain Names to its satisfaction, namely , , , and . The Panel finds that these are more likely than not to be under common control. It should be noted that none of the registrants of these Disputed Domain Names have either asserted their independence from the others, or have behaved in any independent way following notification of the Complaint. However, the Panel is not able to link to these others. The only similarities between the linked Disputed Domain Names and the latter Disputed Domain Name are that they share the same web hosting company and email provider, and that they offer "Scribd" downloads. In this particular case, there would need to be other correspondences evident besides these, and here the Panel can find none. For example, there is insufficient similarity in the domain name structure, and there is no link in registrant name or address, which in the latter case are Spanish in origin rather than having any apparent connection to Viet Nam. Furthermore, the Panel notes that there has been independent conduct here, in that the registrant of this particular Disputed Domain Name made contact with the Center following notification of the Complaint, proposing to cancel the Disputed Domain Name concerned. In all of these circumstances, the Panel determines that it is appropriate to consolidate the multiple registrants of , , , and (hereinafter referred to as "the Disputed Domain Names"). The Disputed Domain Name will not be considered in this case (without prejudice to the filing of a separate UDRP complaint). B. Identical or Confusingly Similar The first element assessment under the Policy is typically conducted in two parts. First, the Complainant must demonstrate that it possesses UDRP-relevant rights in a trademark. Secondly, the Disputed Domain Names are individually compared to any such trademark to assess identity or confusing similarity, usually on a relatively straightforward side-by-side basis, typically disregarding the Top-Level Domain ("TLD") concerned as being primarily required for technical reasons. On the basis of such a comparison, if the Disputed Domain Names are seen to be identical to the trademark, identity will generally be found. If the trademark is otherwise identifiable in the Disputed Domain Names, confusing similarity will usually be found. The Panel finds that the Complainant has UDRP-relevant rights in its registered trademark as outlined in the factual background section above. Comparing this to each of the Disputed Domain Names, it is clear that all of these contain elements of the Complainant's SCRIBD mark to a greater or lesser extent. The mark is repeated in full only in . However, in , while the trademark is not repeated in full, only the letter "d" has been omitted. In the Panel's opinion, therefore, the mark is recognizable in these two domain names. The addition of the other terms "down" and "dl" would not prevent a finding of page 7 confusing similarity under the Policy (see section 1.8 of the WIPO Overview 3.0). Considering and , these Disputed Domain Names only repeat the first three letters and two letters respectively of the Complainant's mark. At best, this hints at the mark but does not necessarily render it fully recognizable per se. Nevertheless, the content of the respective websites, expressly referring as they do to the Complainant's SCRIBD mark by way of a "Scribd Downloader", makes it clear prima facie that the Respondent seeks to target such mark, and therefore serves to affirm the confusing similarity (see section 1.15 of the WIPO Overview 3.0). In all of the above circumstances, the Panel finds that each of the Disputed Domain Names is confusingly similar to a trademark in which the Complainant has rights and therefore that the Complainant has carried its burden with regard to the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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." The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights to or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the websites associated with the Disputed Domain Names (with the exception of ) currently provide their users with the ability to download content from the Complainant's platform without providing the proper compensation, thus not constituting a bona fide offering of goods or services, and that the Respondent is not authorized to use the Complainant's mark, nor is it commonly known thereby. With regard to , the Complainant has found no evidence of any demonstrable preparations on the Respondent's part to use this Disputed Domain Name in connection with a bona fide offering of goods and services and, indeed, the present use of the other Disputed Domain Names leads the Complainant to a reasonable apprehension that would probably be used in a similar manner were it to be activated. In any event, its non-use does not confer any rights or legitimate interests upon the Respondent in and of itself. The burden of production therefore shifts to the Respondent to bring forth evidence of any rights or legitimate interests which it might have in the Disputed Domain Names. However, the Respondent has not engaged with the administrative proceeding, and there are no submissions or evidence available to the Panel which might have supported any claim of rights or legitimate interests that it might have made in respect of the Disputed Domain Names. In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant's prima facie case that the Respondent has no rights to and legitimate interests in the Disputed Domain page 8 Names, and accordingly that the Complainant has carried its burden in terms of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: "(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location." The websites associated with the Disputed Domain Names, with the exception of , all make specific reference to the Complainant's mark and the materials available on its own website. In these circumstances, the Panel finds that these were registered with the Complainant's SCRIBD trademark firmly in mind. Furthermore, the publication of a tool to circumvent the Complainant's content protection on websites associated with the related Disputed Domain Names could on no view be regarded as a good faith activity as it allows users to access the Complainant's materials for free, and the Disputed Domain Names thereby target the Complainant's trademark to the Complainant's financial detriment (Scribd, Inc. v. Ma Thien Lieu, WIPO Case No. D2022-1667). With regard to , the Panel refers to the Respondent's evident pattern of bad faith conduct, both regarding the remaining Disputed Domain Names, those in the Scribd, Inc. v. Ma Thien Lieu, supra cases, and those previous cases under the Policy cited by the Complainant and identified by the Panel relating to the registrant of , Host Master 1337 Services LLC. There are over 50 such cases under the Policy in which the Center was the provider. All resulted in transfer or cancellation of the domain names concerned. For completeness, the Panel has also considered the usual passive holding factors, given that is passively held (see section 3.3 of the WIPO Overview 3.0). The Panel first notes that the Complainant's SCRIBD mark is highly distinctive and of evident repute considering the number of related Internet users and the volume of related app downloads. Secondly, the Respondent has failed to submit a Response and has provided no evidence of actual or contemplated good faith use. Thirdly, the Complainant asserts that the Respondent's contact details are false and this assertion is uncontradicted by the Respondent. Fourthly and finally, it is implausible that there could be any good faith use to which this particular Disputed Domain Name might be put. In all of the above circumstances, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith and therefore that the Complainant has carried its burden in terms of paragraph 4(a)(iii) of the Policy. page 9 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that: (a) the Disputed Domain Names, , , , and be transferred to the Complainant; and (b) the Complaint is denied as regards the Disputed Domain Name (without prejudice to the filing of a separate UDRP complaint). /Andrew D. S. Lothian/ Andrew D. S. Lothian Sole Panelist Date: May 16, 2023
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