ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Scribd, Inc. v. Muhammad Uzair Case No. D2024-0878 1. The Parties 1.1 The Complainant is Scribd, Inc., United States of America (“United States”), represented by IPLA, United States. 1.2 The Respondent is Muhammad Uzair, Pakistan. 2. The Domain Name and Registrar 2.1 The disputed domain name (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”). 3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2024. At that date the recorded registrant details for the Domain Name provided in response to a WhoIs search was “Hosting Concepts B.V. d/b/a Registrar.eu”. On February 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 1, 2024, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information it held for the Domain Name. The Center sent an email communication to the Complainant on March 5, 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 March 7, 2024. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2024. The Respondent sent email communications to the Center on March 12, 2024, March 13, 2024, and March 18, 2024. The case was suspended on March 20, 2024,
page 2 and reinstituted on April 26, 2024. The Response due date was May 4, 2024. The Respondent did not submit any formal Response. 3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 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 4.1 The Complainant in this administrative proceeding is incorporated in the state of Delaware, United States. It has since 2007 engaged in the business of providing access to ebooks, audiobooks, magazines, podcasts online. It currently has over 1,800,000 paying subscribers, and over 200,000,000 unique visitors per month visit its website operated from the domain name . The Complainant’s self-titled app has provided over 1 million downloads and its audiobook app EVERAND, has provided over 10 million downloads. 4.2 The Complainant is the owner of a large number of registered trade marks in multiple jurisdictions that comprise or incorporate the term “SCRIBD”. They include the following: (i) United States trade mark registration No. 3777227 filed on August 3, 2009 and registered on April 20, 2010 for SCRIBD as a standard character mark in classes 9, 35, 38, and 42; (ii) United States trade mark registration No. 5898302 filed on July 3, 2018 and registered on October 29, 2019 for SCRIBD as a standard character mark in classes 9, 35, and 42; and (iii) European Union trade mark registration No. 1422028 dated July 11, 2018 for SCRIBD as a word mark in classes 9, 35, and 42, being the European Union designation of an international trade mark registration. 4.3 The registrant and contact information provided by the Registrar suggests that the Respondent is an individual apparently located in Pakistan. 4.4. The Domain Name was registered on December 6, 2023. It has been used since registration for a website that offers a “Scribd Downloader” tool that allows users to download content available on Complainant’s platform without subscribing by acting as a proxy and manipulating the URL link. 4.5 That website continues to operate from the Domain Name as at the date of this decision. 5. Parties’ Contentions A. Complainant 5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. 5.2 In this respect the Complainant contends that the Domain Name contains its trade mark in its entirety in combination with a descriptive term. It further contends that the Domain Name is being used to redirect traffic away from Complainant and the services it offers. It also claims that the Domain Name was registered or acquired: “to intentionally attempt to extort money or attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Scribd Marks as to the source, sponsorship, affiliation, or endorsement of the website”
page 3 B. Respondent 5.3 The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent sent various informal communications on March 12, 2024, March 13, 2024, and March 18, 2024, merely asking the process of deleting the domain or transferring to the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar 6.1 It is generally 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 trade mark and the disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. 6.2 The Complainant has shown rights in respect of a trade mark for the purposes of the Policy (see WIPO Overview 3.0, section 1.2.1). 6.3 The entirety of that trade mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy (see WIPO Overview 3.0, section 1.7). 6.4 Although the addition of other terms in a domain name may bear on assessment of the second and third elements, the Panel finds the addition of the term “get” in the Domain Name does not prevent a finding of confusing similarity between Domain Name and the mark for the purposes of the Policy (see WIPO Overview 3.0, section 1.8). 6.5 Accordingly, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests 6.6 Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. 6.7 In the present case the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the 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 Domain Name. 6.8 However, dealing with the issue more directly, and for reasons that are set out in the context of the Panel’s assessment of bad faith, the Panel is satisfied that the Domain Name has been registered and held for a website that allows users to download content available on Complainant’s platform without subscribing to the Complainant’s services. The Panel is also of the view that the Domain Name inherently and deliberately impersonates the Complainant (or at the very least suggests sponsorship or endorsement by Complainant), in that it comprises the entirety of the Complainant’s trade mark, combined with a purely descriptive term that that does not dispel the Domain Name’s implied affiliation with the Complainant. 6.9 There is no right or legitimate interest in using the Complainant mark in the Domain Name in order to “compete” with the Complainant in this manner (see WIPO Overview 3.0, section 2.5.2), or in holding a Domain Name that impersonates the Complainant (see WIPO Overview 3.0, section 2.5.1). Further, the Panel is of the view that such use and impersonation provide positive evidence that no such rights or legitimate interests exist. 6.10 Accordingly, the Panel finds the second element of the Policy has been established.
page 4 C. Registered and Used in Bad Faith 6.11 The Panel is satisfied that the Domain Name has been registered and used by the Respondent with knowledge of the Complainant and with the intention of drawing internet users to a website that offers a tool that allows users to download content from the Complainant’s platform without subscribing to the Complainant’s services. 6.12 Not only are the Complainant’s assertions in this respect not disputed, but the Complainant has provided evidence in this respect in the form of screenshots from the website operating from the Domain Name that are consistent with the Complainant’s allegations. 6.13 The Complainant also contends that the Domain Name is being used in this way in an “attempt to extort money” or “for commercial gain”. Whether this contention is correct, is not so clear. The basis for this assertion is not explained by the Complainant nor is it apparent from the website material the Complainant has provided. Further, as at the date of this decision the website operating from the Domain Name claims that the relevant tool can be downloaded for free, and asserts that the “tool was created to help students and people who can’t spend money to download their desired documents.” 6.14 However, regardless of whether the website is being operated for commercial gain, the Panel is satisfied that the registration and use of the Domain Name was in bad faith. The Respondent is clearly attempting to attract Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. Further, this use of the Domain Name is clearly designed to disrupt the Complainant’s business. In addition, the informal communications received from the Respondent on record do not alter the Panel’s finding. 6.15 If this activity is non-commercial, it does not strictly fall within the scope of the example of circumstances evidencing bad faith registration set out in paragraph 4(b)(iv) of the Policy. However, this is merely one of a number of non-exhaustive examples of such circumstances. The Panel is also satisfied that the Respondent’s website even if it is noncommercial competes with that of the Complainant, and that the activity of the Respondent therefore falls within the scope of the example of circumstances evidencing bad faith registration and use set out in paragraph 4(b)(iii) of the Policy. In any event, when looked at as a whole, the Panel is satisfied that the Respondent registered the Domain Name and has used the Domain Name in order to take unfair advantage of the association between the Domain Name and the Complainant’s trade mark. This is sufficient for a finding of bad faith registration and use (see WIPO Overview 3.0, section 3.1). 6.16 Further, there is the issue of impersonation. Notwithstanding that at least as at the date of this decision there can be found disclaimers on the Respondent’s website asserting that the “website is not officially associated or affiliated with the Scribd platform”, these are far from prominent and are unlikely to prevent confusion on the part of Internet users (see WIPO Overview 3.0, section 3.7). In any event, the Panel is of the view that the Domain Name alone inherently and deliberately impersonates the Complainant. The term “Scribd” can only be sensibly understood as a reference to the Complainant’s trade mark and the term “get”, being an ordinary English word, does not sufficiently indicate a lack of association with the Complainant’s mark and business (as to which see the Panel’s consideration of the issue of impersonation in Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031). 6.17 Accordingly, the Panel finds the third element of the Policy has been established.
page 5 7. Decision 7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant. /Matthew S. Harris/ Matthew S. Harris Sole Panelist Date: May 29, 2024
Full & Egal Universal Law Academy