Scribd, Inc. v Muhammad Tamoor Hasan

WIPO Case No. D2025-1515

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Scribd, Inc. v. Muhammad Tamoor Hasan

Case No. D2025-1515

1. The Parties

The Complainant is Scribd, Inc., United States of America (“United States”), represented by IPLA, United

States.

The Respondent is Muhammad Tamoor Hasan, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <freescribddownloader.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2025. On April 15, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2025, 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 (Dynadot Inc (Registrar)) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2025, 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 21, 2025.

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 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2025.

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The Center appointed James Bridgeman as the sole panelist in this matter on May 20, 2025. 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 provider of computer software and services using its SCRIBD mark, for which it has an international portfolio of registered trademarks and service marks including:

• United States registered trademark and service mark SCRIBD registration number 3,777,227,

registered on the Principal Register on April 20, 2010, for goods and services in international classes 9, 35,

38, 42;

• United States registered trademark and service mark SCRIBD registration number 5898302,

registered on the Principal Register on October 29, 2019, for goods and services in international classes 9,
35, 42.

The Complainant has an established Internet presence and maintains its website at < on which it offers and promotes its goods and services.

The disputed domain name was registered on May 4, 2024, and resolves to a website that purports to offer the Complainant’s software downloads free of charge.

There is no information available about the Respondent, who availed of a privacy service to conceal his identity from the public on the Registrar’s public WhoIs, except for that provided in the Complaint, as amended, and the information provided by the Registrar in response to a request from the Center to provide details of the registration of the disputed domain name for the purposes of this proceeding.

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 claims rights in the SCRIBD mark established by its ownership of an international portfolio of forty-four trademark and service mark registrations, including the United States registrations described above.

Furthermore, the Complainant claims a protectable goodwill in the SCRIBD mark through extensive use in its business providing computer software and services since at least as early as 2009 including on its website at <

In support of its claim to have a substantial reputation in the SCRIBD mark, the Complainant submits that since 2007, it has served over 1,950,000 paying subscribers and has over 200,000,000 unique visitors per month to its website at “ In Apple’s App Store, the Complainant’s self-titled app has over 140 ratings, and its e-book, and audiobook app, EVERAND ranks 37th in books, with over 26,000 ratings, and a 4.4 rating overall. On Google Play, the Complainant’s self-titled app has over 1 million downloads, a 3.0 rating overall, over 4,600 reviews, and its audiobook app EVERAND, has over 10 million downloads and

a 4.0 rating overall.

Firstly, the Complainant alleges that the disputed domain name is nearly identical and confusingly similar to the SCRIBD mark in which it has rights, because it contains the Complainant’s mark in its entirety.

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The Complainant argues that panels established under the Policy have recognized that the incorporation of a
mark in its entirety can be sufficient to establish that a domain name at issue is identical or confusingly
similar to a complainant’s registered mark. See WIPO Overview of Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”), at paragraph 1.7; and the decision in Scribd, Inc. v. Nanci
Nette, Name Management Group, WIPO Case No. D2024-4613 (finding the domain name at issue
<freescribddownload.com> to be confusingly similar to the wholly incorporated SCRIBD mark).

Moreover, the Complainant contends that the addition of a descriptive term such as “free” or “downloader” does not distinguish the domain name from the Complainant’s Scribd Marks. Past panels have found a likelihood of confusion where the mere addition of a descriptive term like “downloader” to a complainant’s trademark is insufficient to avoid confusion, citing LinkedIn Corporation v. Jyoti Kumari WIPO Case No. D2022-0677 (finding the domain name at issue <linkedindownloader.com> confusingly similar to the LINKEDIN trademark).

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, arguing that:

• the disputed domain was registered on May 4, 2024, long after the first use dates and/or trademark

registration dates of the Complainant’s SCRIBD mark, and after the Complainant’s website was registered
and operational;

• the Complainant is not aware of any trademark rights, domain name rights, or other rights that the

Respondent has relating to the SCRIBD mark;

• the Complainant has never authorized the Respondent to use its SCRIBD mark in connection with any

goods or services;

• nothing in the WhoIs information for the disputed domain name nor any other publicly available source

suggests that the Respondent is commonly known by the disputed domain name and panels established
under the Policy have found that absent such evidence, respondents in such cases lack rights or legitimate
interests in the domain name.

Furthermore, the Complainant refers to a screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint. The screen capture shows that the resolving website purports to offer a “Scribd Downloader” tool that allows users to download content available on the Complainant’s platform without subscribing by acting as a proxy and manipulating the URL link. The content on the website states that the download is “a powerful tool that gives free access to the library of Scribd, which contains numerous books, documents, and other stuff without having to pay for the membership”, meaning that the website at the disputed domain name purports to offer a tool that allows users to download the Complainant’s content without proper compensation. The Complainant argues that such use of the disputed domain name does not constitute a legitimate or bona fide offering of goods and services.

Thirdly, the Complainant alleges that the disputed domain name was registered and is being used in bad
faith, arguing that the Complainant has trademark rights in the SCRIBD mark dating back to at least as early
as 2006 when it first developed and launched its website at the domain name <
Additionally, the Complainant’s first United States trademark application for the SCRIBD mark was filed on
August 3, 2009, with a first use date at least as early as March 6, 2007, and registered on April 20, 2010.
Furthermore, the Complainant has been using its SCRIBD mark on its website since at least as early as
2006.

The disputed domain name was registered on May 4, 2024; therefore, the Complainant has senior trademark rights in the SCRIBD mark.

The disputed domain name, which wholly incorporates the Complainant’s SCRIBD trademark and service mark, resolves to a website which directly references the Complainant’s goods and services without any authorization from the Complainant, stating “[t]o understand Scribd Downloader completely, one must know about Scribd. In addition to the most-visited online platform, Scribd, users can also read and download digital files like books, magazines, audiobooks, and documents. . . . You may access Scribd’s enormous library of

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papers, ebooks, and other digital stuff for free by skipping the membership fees and following

these simple steps.”

It is contended that such use of the disputed domain name indicates that the Respondent was well aware of
the Complainant and its SCRIBD mark. See The Commissioners for HM Revenue and Customs v.

WhoisGuard Protected, WhoisGuard, Inc. / Ashley Heart WIPO Case No. D2021-0346.

Moreover, it is argued that because the disputed domain name reproduces the Complainant’s trademark in
its entirety, it 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.

Additionally, the Complainant submits that the Respondent knew of the Complainant’s prior trademark rights and purposely added the terms “free” and “downloader” to redirect traffic away from the Complainant’s own website at the domain name < and lure consumers to its website on the pretext of circumventing the Complainant’s subscription requirements.

In conclusion, the Complainant argues that the Respondent is using the SCRIBD mark within the disputed domain name to redirect Internet traffic away from the Complainant and the services it offers, in an intentional attempt to extort money or attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s SCRIBD mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See WIPO Overview 3.0 at section 2.5.3 (“[C]ommercial gain may include the respondent gaining or seeking reputational or bargaining advantage, even where such advantage may not be readily quantified.”).

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 of the test set for the Complainant in the Policy 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 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy, established by its ownership of the international portfolio of registrations for the SCRIBD mark described above. WIPO Overview 3.0, section 1.2.1.

The Panel additionally finds that the Complainant has established unregistered trademark or service mark rights for the purposes of the Policy through extensive use of the mark, which is inherently distinctive, in its software business including online on its website at < since on or about 2009. WIPO

Overview 3.0, section 1.3.

The entirety of the SCRIBD 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 other terms, here, the words “free” and “downloader” 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.

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The Panel finds the first element of the test in paragraph 4(a)(i) 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.

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 uncontested evidence is that the Complainant’s registered trademark and common law rights in the SCRIBD mark long predate the registration of the disputed domain name on May 4, 2024; the Respondent has not been granted any license or permission to use the SCRIBD mark in the disputed domain name or otherwise; there is nothing in the record to suggest that the Respondent is commonly known by the disputed domain name; and the use of the disputed domain name within the Respondent’s website address purporting to offer free downloads of the Complainant’s software does not constitute a bona fide offering of goods or service or a legitimate noncommercial or fair use of the disputed domain name

The Panel finds the second element of test in paragraph 4(a)(i) 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, on the balance of probabilities, the registrant of the disputed domain name was aware of the Complainant’s rights in the SCRIBD mark, and the Complainant’s use of the mark on its website at “ prior to the registration of 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.

The disputed domain name is a combination of the Complainant’s distinctive mark with elements inferring a reference to computer software. In the absence of any explanation, on the balance of probabilities, the Respondent created and registered the disputed domain name with the elements “free” and “downloader” in combination with the Complainant’s mark in bad faith, with the intention of targeting and taking predatory advantage of the goodwill and reputation of the Complainant in its mark.

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Furthermore, the Respondent is using the confusingly similar disputed domain name as the address of a website which purports to offer, without license or consent, a “Scribd Downloader” tool that allows users to download content available on the Complainant’s platform without subscribing by acting as a proxy and manipulating the URL link.

This Panel finds that by the registration of the disputed domain name in such circumstances and the unauthorized use of the Complainant’s mark within the disputed domain name in such manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the Respondent’s website and the software products and services purported to be offered on his website.

The Panel finds that the Complainant has established the third element of the test in paragraph 4(a)(iii) 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 <freescribddownloader.com> be transferred to the Complainant.

/James Bridgeman SC/
James Bridgeman SC
Sole Panelist
Date: May 28, 2025