ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Scribd, Inc. v. Nizar Ali Khan, Apk Beyond Case No. D2024-1754 1. The Parties The Complainant is Scribd, Inc., United States of America (“United States”), represented by IPLA, United States. The Respondent is Nizar Ali Khan, Apk Beyond, Pakistan. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2024. On April 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Namecheap, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 30, 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 May 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2024. The Respondent sent informal query email communications to the Center on April 27, and 29, 2024 and subsequently on May 8, 2024, sent a more substantive email as noted under Section 5(b) below. The Center sent an email inviting the parties to suspend to consider settlement negotiations on the same day, but the Complainant’s legal representative confirmed that the proceedings should continue.
page 2 The Center appointed Alistair Payne as the sole panelist in this matter on May 28, 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 owns the domain name from which, since approximately 2006, it has operated its SLIDESHARE business which enables people to share presentation and content documents for information purposes and is based on a subscription model. The Complainant owns United States trade mark registration number 4212895 for its SLIDESHARE mark which was registered on September 25, 2012. The disputed domain name was registered on April 1, 2023, and resolves to a website entitled “Free Slide Share Downloader” which provides Internet users with a free service that allows them access to the third party presentations and content available on the Complainant’s website by facilitating its download without any obligation to subscribe to the Complainant’s commercial SLIDESHARE service. 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. The Complainant submits that it owns registered trade mark rights for its SLIDESHARE mark as set out above and that the disputed domain name wholly incorporates its mark and is therefore confusingly similar to it. It says that the addition of the word “save” does not distinguish the disputed domain name or prevent a finding of confusing similarity. The Complainant notes that the disputed domain was registered well after the first use dates and/or registration date of its trade mark. It says that the disputed domain name provides users the ability to download copyright protected content from the Complainant’s platform by acting as a proxy and manipulating the URL link and without subscribing to the Complainant’s services. The disputed domain name advertises, “Free Download SlideShare Online in pdf” meaning that it offers a tool to download the Complainant’s content without proper compensation. The Complainant says that it also links to the Complainant’s website “How to Download from SlideShare Without an Account”. When the Complainant tested the SlideShare URL, it downloaded the content without paying/subscribing for services. Finally, the Complainant notes that the website at the disputed domain name features a variety of ads that link to, among other sites, various pdf converters. The Complainant submits that the Respondent’s use of the disputed domain name to facilitate this illegal activity is not a bona fide use and cannot confer rights or legitimate interests. The Complainant says that it is not aware of any trade mark rights, domain name rights, or other rights that the Respondent has relating to its SLIDESHARE mark and that the Complainant has never authorised the Respondent to use its SLIDESHARE mark in connection with any goods or services. Additionally, says the Complainant, there is nothing in the Respondent’s WhoIs information, or any other publicly available source, to suggest that the Respondent is commonly known by the disputed domain name. Therefore, says the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits as to registration in bad faith, that its trade mark registration and use of the SLIDESHARE mark from 2006 onwards pre-dates by many years the 2023 registration of the disputed domain name. The fact, says the Complainant, that the website at the disputed domain name references and links to the Complainant’s website, in particular giving instruction on “How To Download SlideShare Without An Account” and also provides pop-up advertisements that offer competitive document conversion
page 3 tools leaves no doubt that the Respondent was aware of the Complainant’s business when it registered the disputed domain name. As of April 16, 2024, the Complainant says that the disputed domain name continues to use the Complainant’s marks to attract users who can avoid signing up for the Complainant’s services and download exclusive copyrighted content for free. Therefore, says the Complainant, the disputed domain name is being used for illegal activity which constitutes bad faith. The Complainant submits that the Respondent is using the SLIDESHARE mark and the disputed domain name to re-direct traffic away from the Complainant’s website and the services it offers. The Complainant contends that the Respondent registered and/or acquired the disputed domain name and has used it 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 Complainant’s SLIDESHARE mark as to the source, sponsorship, affiliation, or endorsement of the website at the disputed domain name. B. Respondent The Respondent did not formally reply to the Complainant’s contentions but on May 8, 2024, sent the following email to the Center: “We have thoroughly read the documents that you have sent to us. We have concluded that all this is about the domain name. We were beginners back then when we started this website, so we did not know about these trademarks and stuff. Now we request you that allow us to buy a new domain name without the Slideshare name on it and redirect our old domain to the new one.” 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 trade mark 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 trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced 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. Although the addition of another term, in this case the word “save”, 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. 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. The Complainant has submitted that the disputed domain name was registered well after the Complainant’s trade mark registration and first use. It has noted that the disputed domain name provides users the ability to download copyright protected content from the Complainant’s platform without its authority by acting as a proxy and manipulating the URL link and without subscribing to the Complainant’s services. The Complainant has asserted that this is illegal and is not a bona fide use that confers rights or legitimate interests. The Complainant has submitted that it is not aware of any trade mark rights, domain name rights, or other rights that the Respondent has relating to its SLIDESHARE mark. It has also submitted that it has never authorised the Respondent to use its SLIDESHARE mark in connection with any goods or services. The Complainant has noted that there is nothing in the Respondent’s WhoIs information, or any other publicly available source, to suggest that the Respondent is commonly known by the disputed domain name. Therefore, says the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. 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. 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 use of the SLIDESHARE mark from 2006 onwards pre-dates by many years the 2023 registration of the disputed domain name. The fact that the website at the disputed domain name references and links to the Complainant’s website, in particular giving instruction on “How To Download SlideShare Without An Account” and also provides pop-up advertisements that offer competitive document conversion tools strongly suggests that the Respondent was well aware of the Complainant’s business and SLIDESHARE mark when it registered the disputed domain name. 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. Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.
page 5 The Respondent in this case has used the disputed domain name to redirect Internet users seeking the Complainant’s service to the Respondent’s site which facilitates them accessing the Respondent’s service without paying for a subscription. This means that the Respondent is facilitating Internet users in gaining unauthorised access to the third-party content available from the Complainant’s website without the permission of the relevant copyright owner or licensee which potentially amounts to copyright infringement. According to the Complainant, the Respondent’s website at the disputed domain name also provides pop-up advertisements that offer competitive document conversion tools which suggests that the Respondent is using the disputed domain name incorporating the SLIDESHARE mark to redirect Internet users to its website for its own commercial gain. This conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy and amounts to evidence of registration and use in bad faith. Panels have held that the use of a domain name for illegal activity, here claimed to be the unauthorised use of the Complainant’s website at the domain name in order to facilitate Internet users accessing third party owned content on the Complainant ‘s website without authorisation and which may amount to facilitating copyright infringement, constitutes illegal activity and therefore is 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 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. /Alistair Payne/ Alistair Payne Sole Panelist Date: June 11, 2024
Full & Egal Universal Law Academy