WIPO Domain Name Decision D2024-1412 for slidesharedown.com

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Scribd, Inc. v. HigherSkills, Umar Farooq Case No. D2024-1412 1. The Parties The Complainant is Scribd, Inc., United States of America (“United States”), represented by IPLA, United States. The Respondent is HigherSkills, Umar Farooq, Pakistan. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2024. On April 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2024, 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 (NameSilo, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 10, 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 April 15, 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 April 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2024. The Center appointed Syed Naqiz Shahabuddin 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.
page 2 4. Factual Background The following summary set out the uncontested factual submissions made by the Complainant: 4.1 The Complainant owns 14 trademark registrations for SLIDESHARE worldwide for use in connection with a variety of reporting, computer, electronic, and software related goods and services (the “SLIDESHARE Marks”), including United States Trademark Registration No. 4212895 for the mark SLIDESHARE in classes 9, 35, and 42, registered on September 25, 2012. 4.2 The Complainant and its predecessors in interest have continuously used, and owned trademark registrations for, the SLIDESHARE Marks in connection with its computer software goods and services since at least as early as 2006. 4.3 The Complainant owns and operates the domain name that was created in April 4, 2006. 4.4 The disputed domain name was registered on November 8, 2022, after the Complainant’s first use dates and/or trademark registration dates of the SLIDESHARE Marks and after the Complainant’s website was registered and operational. 4.5 The Respondent advertises to its users that it offers the ability to avoid signing up for the Complainant’s services by acting as a proxy and manipulating the target URL to allow for free downloads of documents. Specifically, the webpage advertises, “With Slidesharedown you can easily convert and download Slideshare presentations in PDF, PPT, and image formats with just a few clicks” and “The Quick and Easy Way to Download from SlideShare”. However, when attempting to find the downloader tool, one will be bombarded with popup advertisements for file converters. Attempts by the Complainant to access the website also identified an adware threat from the website. 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: (a) The disputed domain name is identical or confusingly similar to the SLIDESHARE Marks and the Complainant’s domain name because the disputed domain name begins with the word SLIDESHARE and incorporates it in its entirety. (b) The addition of the word “down” is likely an abbreviation of the term “downloader” and the addition of this descriptive term does not distinguish the disputed domain name from the SLIDESHARE Marks. Moreover, adding the descriptive term only serves to create a stronger tie to the SLIDESHARE Marks. (c) The disputed domain name alleges it provides users the ability to download copyrighted content from the Complainant’s platform without subscribing to the Complainant’s services by acting as a proxy and manipulating the URL link. Furthermore, the Respondent seeks to drive Internet traffic to other domains that convert files, and potentially exposes users to malware and/or tracking adware. Hence, the Complainant contends that the Respondent is using the disputed domain name for an illegal activity and not being utilized in connection with a bona fide offering of goods or services. (d) The Complainant is not aware of any trademark rights, domain name rights or other rights that the Respondent has relating to the SLIDESHARE Marks nor has the Complainant ever authorized the Respondent to use its SLIDESHARE Marks in connection with any goods or services. There is also
page 3 nothing in the Respondent’s WhoIs information or other publicly available source suggesting that the Respondent is commonly known by the disputed domain name. (e) By virtue of long and extensive use since 2006 which was followed by registration on September 25, 2012, the Complainant contends that it has senior trademark rights in the SLIDESHARE Marks which pre-date the registration of the disputed domain name on November 8, 2022. (f) The Respondent was well aware of the Complainant’s presence and offerings as well as rights in the SLIDESHARE Marks as the Respondent directly references and links the Complainant’s website at the top of the webpage and throughout the website. (g) The Respondent is using the SLIDESHARE Marks and the disputed domain name to redirect traffic away from the Complainant and the services it offers in a wrongful or illegal manner. In this regard, the Complainant contends that the Respondent registered and/or acquired and used the disputed domain name in bad faith to intentionally attempt to extort money or attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SLIDESHARE Marks as to the source, sponsorship, affiliation, or endorsement of the website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. There have been several similar UDRP cases where the panels determined that the domain names in dispute were confusingly similar to the trademarks in question notwithstanding the addition of a word (Scribd, Inc, v. ngel, WIPO Case No. D2023-3309 (); Scribd, Inc. v. Sudheesh R, WIPO Case No. D2024-0270 (); LinkedIn Corporation v. Jyoti Kumari, WIPO Case No. D2022-0677 (); Instagram, LLC v. Domains By Proxy, LLC / Ahmed Hemaid, WIPO Case No. D2021-1439(); Shutterstock, Inc. v. NameSilo, LLCistrator, See PrivacyGuardian.org / Samir Basmir, WIPO Case No. D2020-2565 (; Scribd, Inc. v. Private Whois, Global Domain Privacy Services Inc. / Robert Brink, WIPO Case No. D2022-2662 (); Scribd, Inc. v. Ma Thien Lieu, WIPO Case No. D2021-1077 (); Scribd, Inc. v. Host Master, 1337 Services LLC, WIPO Case No. D2021-2590 (). Although the addition of other terms here, “down”, may bear on assessment of the second and third elements, the Panel finds the addition of such 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. The Panel finds the first element of the Policy has been established.
page 4 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. 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 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 here, claimed, such as providing the means to download copyrighted material without proper compensation and enabling malware and adware threats, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. In Scribd, Inc, v. ngel, WIPO Case No. D2023-3309, the panel found that the Respondent’s use of “to offer unauthorized access to copyrighted material available only to subscribers to the Complainant’s platform amounts to fraudulent activity”, and in Nintendo Co., Ltd v. Trinh Viet Hung, PVN, WIPO Case No. D2020-2986, the panel held that (“[r]espondent’s use of the Disputed Domain Name in connection with a website that offers for free Complainant’s counterfeit copyrighted material and which is also monetized via an ads campaign, as well as links to various donations methods for the website owner, is not a bona fide use and can never confer rights or a legitimate interest”. In this case, the Panel finds the disputed domain name is not being utilized in connection with a bona fide offering of goods or services as it currently does not offer any services or goods of its own but rather seeks to allegedly create free access to copyrighted works that would only be accessible in full by paying for the Complainant’s services. Further, it uses the SLIDESHARE Mark to drive Internet traffic to domains that convert files, and potentially exposes users to malware and/or tracking adware. 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, it appears that the Respondent had only registered the disputed domain name in 2022 which was well after the date when the Complainant (and its predecessors in interest) first started using the SLIDESHARE Marks in 2006 and subsequently registered the same in the United States and worldwide. Based on the evidence presented, the Respondent’s actions suggest an opportunistic bad faith on its part when it sought to procure and/or register and to begin using the disputed domain name in the manner complained of. Upon registering the confusingly similar domain name, the Respondent began advertising to Internet users that it offers the ability to avoid signing up for the Complainant’s services by acting as a proxy and manipulating the target URL to allow for the free download of copyrighted documents. To put matters in
page 5 context, the disputed domain name directly references and links to the Complainant’s website at the top of the webpage, noting that “With Slidesharedown you can easily convert and download SlideShare presentations in PDF, PPT, and image formats with just a few clicks”. In the case of Scribd, Inc, v. ngel, WIPO Case No. D2023-3309, the panel found that the respondent’s mention of the SlideShare platform by name evidences that the respondent was aware of complainant. It was held that this direct link, in combination with the pop-up advertisements for competitive document conversion tools leaves “no doubt that the Respondent was aware of the Complainant”. It can, therefore, be reasonably concluded that the Respondent intended to use and is using the SLIDESHARE Marks and the disputed domain name to redirect traffic away from the Complainant and the services it offers. It appears that the Respondent registered and/or acquired the disputed domain name and used the disputed domain name in bad faith to intentionally attempt to extort money or attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SLIDESHARE Marks as to the source, sponsorship, affiliation, or endorsement of the website. WIPO Overview 3.0 at section 2.5.3 provides that (“[C]ommercial gain may include the respondent gaining or seeking reputational or bargaining advantage, even where such advantage may not be readily quantified.”. In Champion Broadcasting System, Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128, a finding of bad faith was also made where the respondent incorporated the complainant’s entire mark and utilized it to attract users to a website for commercial gain. The panel found that it would be implausible that there could be any legitimate reason for the respondent’s choice of a domain name that incorporates complainant’s federally-registered trademark. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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 /Syed Naqiz Shahabuddin/ Syed Naqiz Shahabuddin Sole Panelist Date: May 27, 2024


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