ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Scribd, Inc, v. ngel Case No. D2023-3309 1. The Parties The Complainant is Scribd, Inc, United States of America ("United States"), represented by IPLA, United States. The Respondent is ngel, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Squarespace Domains II LLC (the "Registrar")0F1. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2023. On August 2, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2023, 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 (Google LLC (Registrar)) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 11, 2023 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 August 16, 2023. 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 August 17, 2023. On September 8, 2023, due to an 1The Complaint was filed identifying the Registrar as Google LLC. On September 28, 2023, Google LLC confirmed that the disputed domain name is registered with Squarespace Domains II LLC following a purchase agreement. Google LLC has confirmed both Registrars' compliance with the UDRP and the implementation of the decision by either Registrar. page 2 administrative oversight, the Center sent again the Notification of Complaint and Commencement of Administrative Proceeding. The Written Notice was transmitted on September 11, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent's default on October 5, 2023. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 16, 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 Complainant offers software and services related to online sharing of content, including uploading and transmitting presentations. It is the proprietor of several registrations for its SLIDESHARE mark, which it has used since 2006, when it registered the domain name and established a website at that domain. Complainant's website has 49 million unique monthly visitors. The trademark registrations of Complainant include United States Registration No. 4212895 for SLIDESHARE (word mark), registered on September 25, 2012, for goods and services in classes 9, 35 and 42, claiming a date of first use of October 4, 2006. The disputed domain name was registered on July 24, 2022. It resolves to a website offering a service to download presentation documents. The website states the following: "BEST SLIDE DOWNLOADER 2023 Easily download documents from renowned platforms like Slideshare, Slideplayer, Issuu, SlidesGo, SlideTeam, SlideServe, and Issuu using efficient downloader tool. Simple steps to save slide presentations directly to your device. Choose from diverse formats, including PDF, PPT, and PPTX. Experience the convenience without any complexities. Experience a streamlined slide downloading process. Absolutely free." The record reflects that the Respondent's website previously also hosted third-party advertisements. No other information is available about the Respondent. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that it has continuously used its registered SLIDESHARE mark in connection with its computer software goods and services since 2006. The disputed domain name is nearly identical to the Complainant's domain name at and incorporates its SLIDESHARE mark. The addition of the term "download" does not distinguish the disputed domain name from the Complainant's mark but rather increases the potential that Internet users will be confused. The Respondent's website enables Internet users to download content from the Complainant's platform without subscribing by acting as a proxy and manipulating the url link. It creates free access to copyrighted works that would otherwise be accessible only by paying for the Complainant's services. There is no evidence that the Respondent has any rights in the SLIDESHARE mark. The Respondent is using the disputed domain name to redirect traffic away from the Complainant's services. page 3 B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (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) Respondent has registered and is using the disputed domain name in bad faith. Under paragraph 15(a) of the Rules, "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". A. Identical or Confusingly Similar 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the SLIDESHARE mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms (here, "download") may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. WIPO Overview 3.0, section 2.1. page 4 Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. The Panel finds that using the disputed domain name to offer unauthorized access to copyrighted material available only to subscribers to the Complainant's platform amounts to fraudulent activity. WIPO Overview 3.0, section 2.13.1. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Complainant's rights in its SLIDESHARE mark predates the registration of the disputed domain name by a decade. The disputed domain name incorporated the entirety of the Complainant's mark, with the addition of the term "download," which further underlines the association with the Complainant. The Respondent's website mentions the Complainant's "Slideshare" platform by name, leaving no doubt that the Respondent was aware of the Complainant. The Panel finds that, in registering the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the complainant's mark. See WIPO Overview 3.0, section 3.1.4. Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) constitutes bad faith. As mentioned, the Panel finds that the Respondent's use of the disputed domain name to confuse Internet users and enable them to bypass the Complainant's platform access controls amounts to fraudulent activity. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent's registration and use of the disputed domain name constitutes bad faith under the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. 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, , be transferred to the Complainant. /Ingrīda Kariņa-Bērziņa/ Ingrīda Kariņa-Bērziņa Sole Panelist Date: October 31, 2023
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