ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Scribd, Inc. v. Moon Man Case No. D2024-0205 1. The Parties The Complainant is Scribd, Inc., United States of America (“United States”), represented by IPLA, United States. The Respondent is Moon Man, Saudi Arabia. 2. The Domain Names and Registrar The disputed domain names and are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2024. On January 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January18, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Namecheap, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 2024, 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 January 20, 2024. 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 January 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2024.
page 2 The Center appointed Andrea Mondini as the sole panelist in this matter on February 15, 2024. 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 company based in the United States. The Complainant holds the domain name which hosts its main website providing a digital document library which was launched in 2006 and now has over 200,000,000 unique visitors per month. The Complainant owns numerous trademark registrations in several jurisdictions, including: TRADEMARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE INTERNATIONAL CLASS SCRIBD United States 3777227 April 20, 2010 9, 35, 38, 42 SCRIBD United States 5898302 October 29, 2019 9, 35, 42 SCRIBD European Union 1422028 July 11, 2018 9, 35, 42 SCRIBD International Registration 1422028 July 11, 2018 9, 35, 42 Because the Respondent did not file a Response, not much is known about the Respondent. The disputed domain names and were registered on the same day, January 13, 2023. According to the evidence submitted with the Complaint, the disputed domain names resolve to a website providing the ability to download content from the Complainant’s website for free. 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 names. Notably, the Complainant contends as follows: The disputed domain names are confusingly similar to the SCRIBD trademark in which the Complainant has rights, because they incorporate this trademark in its entirety, and the addition of the descriptive term “view”, and the letter “v”, respectively, which is not sufficient to avoid confusing similarity. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The trademark SCRIBD has been extensively used to identify the Complainant and its services. The Respondent has not been authorized by the Complainant to use this trademark, is not commonly known by the disputed domain names, and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain names in connection with a bona fide offering of goods and services. To the contrary, the disputed domain names resolve to a website providing the ability to download copyrighted content from the Complainant’s platform without subscribing and without paying proper compensation to the Complainant.
page 3 The disputed domain names were registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well known trademark SCRIBD at the time it registered the disputed domain names. The Respondent is using the disputed domain names in bad faith to allow users to avoid signing up for the Complainant’s services by acting as a proxy and manipulating the target URL to allow free downloads of copyrighted documents and/or redirecting users to potential malware for its own commercial gain. In addition, when accessing one of the disputed domain names, users are redirected to another domain which may then redirect users to malware. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. 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. 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 mark is reproduced within the disputed domain names. Although the addition of other elements such as here the word “view”, and the letter “v”, respectively, may bear on assessment of the second and third elements, the Panel finds the addition of such elements does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain names is viewed as a standard registration requirement and as such is disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). See WIPO Overview 3.0, section 1.11.1. 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.
page 4 Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. 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 names such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activities, such as here by acting as a proxy and manipulating the target URL to circumvent subscription and payment requirements and allow free downloads of copyrighted documents, can never confer rights or legitimate interests on a respondent. 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the view of the Panel, noting that that the Complainant’s trademark predates the registration of the disputed domain names and considering that the Complainant’s trademark is well-known and that the disputed domain names resolve to a website featuring the Complainant’s trademark and offering the ability to download content from the Complainant’s website, it is inconceivable that the Respondent could have registered the disputed domain names without knowledge of the Complainant’s well known trademark. In the circumstances of this case, this is evidence of registration in bad faith. Panels have held that the use of a domain name for illegal activity such as in the present case by acting as a proxy and manipulating the target URL to circumvent subscription and payment requirements and allow free downloads of copyrighted documents constitutes use in bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy. Based on the available record, the Panel finds that the Complainant has established the third element of the Policy with regard to the disputed domain names.
page 5 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 names and be transferred to the Complainant. /Andrea Mondini/ Andrea Mondini Sole Panelist Date: February 29, 2024
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