Scribd, Inc. v Aayush likaa
WIPO Case No. D2024-3479
•14-10-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Scribd, Inc. v. Aayush likaa
Case No. D2024-3479
1. The Parties
The Complainant is Scribd, Inc., United States of America (“United States”), represented by IPLA, United
States.
The Respondent is Aayush likaa, India.
2. The Domain Name and Registrar
The disputed domain name <scribdl.org> is registered with Spaceship, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2024. On August 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 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 (Spaceship, Inc. (Registrar)) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 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 Complaint on August 28, 2024.
The Center verified that the Complaint together with the amended 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 29, 2024. In accordance with the Rules, paragraph
5, the due date for Response was September 18, 2024. The Respondent sent email communications to the
Center on August 28, 2024, August 29, 2024, and September 20, 2024.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on September 30, 2024.
The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
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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 multinational technology company that operates different platforms including the platform Scribd, which is a digital document library. The Complainant has been operating the platform Scribd since 2007.
The Complainant is the owner of the following trademark registrations for SCRIBD, among others:
- United States trademark registration no. 3777227, registered on April 20, 2010, in classes 9, 35, 38, and
42.
- United States trademark registration no. 5898302, registered on October 29, 2019, in classes 9, 35, and 42.
The Complainant is also the owner of the domain name <scribd.com>, registered on September 24, 2006.
The disputed domain name was registered on April 22, 2024.
At the time of filing of the Complaint, the disputed domain name resolved to a website with the heading
“Scribd Downloader”, displaying the SCRIBD trademark and logo and offering a tool allegedly enabling users
to download documents from the Complainant’s platform for free.
The Respondent’s website included a disclaimer in small characters at the bottom of the page stating,
“Scribdl.org is Not Affiliated With Any Websites (Such as Scribd.com). We Do Not Store Any Of The Files On
Our Servers, This Is For Educational Purposes Only ! You Can Dowload A Free Public Access Document
Only. We Highly Recommend Buying The Legal Account of Scribd From The Official Website”.
5. Parties’ Contentions
A. Complainant
Notably, the Complainant contends that the disputed domain name is confusingly similar to its SCRIBD registered trademark as it captures the entirety of its trademark with the mere adjunction of the letter “l” at the end. This slight misspelling constitutes according to the Complainant a classic example of typosquatting.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not authorized by the Complainant to use the disputed domain name, and there is no indication that the Respondent is known under the disputed domain name nor that he has registered any trademark under the name “SCRIBD”. Additionally, according to the Complainant, the
disputed domain name is not being utilized in connection with a bona fide offering of goods and services as
the Respondent currently does not offer any services or goods of his/her own but alleges that he/she creates
free access to copyrighted works that would only be accessible in full by paying for the Complainant’s
services.
Finally, the Complainant contends that the Respondent has used and registered the disputed domain name in bad faith. According to the Complainant, the disputed domain name reproduces the Complainant’s trademark in its entirety, which induces Internet users to err as to the source of the website to which the disputed domain name has resolved and the works made available therein. Further, the Respondent purposely adopted a misspelling of the Complainant’s mark to redirect traffic away from the Complainant’s own website thus making it clear that the Respondent intended to profit from and/or harm the Complainant’s well-known mark and reputation when registering the disputed domain name with the sole purpose of capitalizing on the user traffic intended for Complainant’s website.
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B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent 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 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. UDRP panels consider that the misspelling of the complainant’s trademark (typosquatting) can constitute confusing similarity for purposes of the first element of paragraph 4(a) of the Policy. This is the case if the disputed domain name consists of a common, obvious or intentional misspelling (see section 1.9 of the WIPO Overview 3.0).
In the present case, the mark SCRIBD is entirely reproduced in the disputed domain name and the addition of the letter “l” at the end of the word is barely perceivable. The disputed domain name constitutes an intentional misspelling in the Panel’s opinion. As a result, the disputed domain name is not different enough from the SCRIBD trademark to avoid confusing similarity.
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.
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.
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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.
According to UDRP panels, a respondent’s use of a domain name is not be considered “fair” if it falsely suggests affiliation with the trademark owner. In the present case, the letter “l” is hardly noticeable in the disputed domain name, and the Complainant’s trademark SCRIBD, as well as its logo are prominently displayed on the web page to which the disputed domain name resolved, creating the impression of an official website, operated or at least endorsed by the Complainant. The risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests. WIPO Overview 3.0, section 2.5.1.
The wording “This is for educational purposes only”, featured in the disclaimer at the bottom of Respondent’s website, is not sufficient per se in the Panel’s opinion to consider the use of the dispute domain name as non-commercial or fair use, in view of the misleading appearance of the Respondent’s website, and the Respondent’s attempt at disrupting the Complainant’s business.
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.
Given that the trademark SCRIBD of the Complainant is distinctive and has been widely used before the registration of the disputed domain name, and that the Respondent used the Complainant’s logo on his/her website, the Panel accepts that the Respondent was aware of the existence of the Complainant and of its SCRIBD trademark at the time of the registration of the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
Under paragraph 4(b)(iv) of the Policy, the use of a disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a web site or
location or of a product or service on the website or location, amounts to evidence of registration and use in
bad faith.
The Respondent used the disputed domain name to resolve to a website displaying in a prominent way the Complainant’s trademark and logo and purportedly offering for free the content offered on the Complainant’s official website. Such use was apt to create the false impression that the Respondent’s website was operated or endorsed by the Complainant. Consequently, by using the disputed domain name in such manner, the Respondent intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source and affiliation of its website. Such behavior constitutes use in bad faith under paragraph 4(b)(iv) of the Policy.
| respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels | Furthermore, UDRP panels consider that where the overall circumstances of a case point to the disregard of the Complainant’s rights. |
| The Panel finds that the Complainant has established the third element of the Policy. |
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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 <scribdl.org> be transferred to the Complainant.
/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: October 14, 2024
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