Scribd, Inc. v NameSilo, LLC, Domain Admin, Privacy Protect LLC

WIPO Case No. D2024-3632

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Scribd, Inc. v. NameSilo, LLC, Domain Admin, Privacy Protect LLC
PrivacyProtect org

Case No. D2024-3632

1. The Parties

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

Respondents are NameSilo, LLC, Domain Admin, and Privacy Protect LLC PrivacyProtect org, United

States.

2. The Domain Names and Registrars

The disputed domain name <scribdcareers.com> (a “Disputed Domain Name”) is registered with NameSilo,
LLC, (the “First Registrar”) and the disputed domain name <scribdjobs.com> (a “Disputed Domain Name”
and collectively, with <scribdcareers.com>, the “Disputed Domain Names”) is registered with GMO Internet,

Inc. d/b/a Discount-Domain.com and Onamae.com (the “Second Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7,
2024. On September 9, 2024, the Center transmitted by email to the Registrars a request for registrar
verification in connection with the Disputed Domain Names. On September 9, 2024, the First 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 from
Respondent identified by reference to Annex 1 to the Complaint (Domain Administrator, See
PrivacyGuardian.org), and contact information in the Complaint.

On September 10, 2024, the Second Registrar transmitted by email to the Center its verification response confirming and disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (GMO Internet, Inc. GMO INTERNET Group, Inc. d/b/a Onamae.com) and from

Respondent identified by reference to Annex 1 to the Complaint (Domain Admin, Privacy Protect LLC

PrivacyProtect org), and contact information in the Complaint.

The Center sent an email communication to Complainant on September 18, 2024, with the registrant and
contact information of nominally multiple underlying registrants revealed by the Registrars, requesting
Complainant to either file separate complaints for the Disputed Domain Names associated with different

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underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. Complainant filed an amendment to the Complaint on September 21, 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 Respondent of the Complaint, and the proceedings commenced on September 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 16, 2024.

The Center appointed Scott R. Austin as the sole panelist in this matter on October 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 following undisputed facts appear from the Complaint (as amended) and its annexes:

Complainant is a Delaware corporation based in San Francisco, California which since 2007 has operated a business that provides a wide variety of computer, electronic, and software related goods, including programs and applications in connection with sharing, viewing, and transmitting electronic documents, as well as services involving e-books and audio books, all under the trademark SCRIBD (the “SCRIBD Mark”).

Among other trademark registrations, Complainant owns the following United States Patent and Trademark
Office (“USPTO”) registrations for the SCRIBD Mark:

USPTO Reg. No. 3777227, registered on April 20, 2010, in connection with a range of online document viewing and transmission services including, inter alia, “computer software for sharing electronic documents via electronic, optical and wireless networks” and “Providing temporary use of non-downloadable computer software for sharing, viewing, electronically transmitting, searching, browsing, sharing, tagging, rating, downloading and flagging electronic documents via electronic, optical and wireless networks; providing computer website services, namely, interactive hosting services which allow a user to publish and share their own content and images on-line featuring user-uploaded electronic documents.”

USPTO Reg. No. 5898302, registered on October 29, 2019, in connection with, inter alia, “Mobile software application and downloadable software for purchasing, accessing, viewing and streaming audiobooks via the internet and global communications networks; mobile software application and downloadable software for purchasing, accessing and viewing books, magazines, news reports, documents and sheet music via the internet and global communications networks; computer software for creating and providing user access to searchable databases of information and data; computer software for wireless content delivery.”

Complainant also owns trademark registrations around the world for the SCRIBD Mark, including in
Australia, Venezuela, and the European Union.

Complainant also shows it incorporates the SCRIBD Mark into the domain name <scribd.com> which it created on September 24, 2006, and has used to access and operate its official website and through which Complainant has served over 1,950,000 paying subscribers and now has over 200,000,000 unique visitors per month. Complainant asserts that in Apple’s App Store, Complainant’s self-titled app has a 3.0 rating and its e-book, and audiobook and e-book app, EVERAND ranks 28th in book apps and has over 25,000 ratings,

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and a 4.5 rating overall. On Google Play, Complainant’s self-titled app has over 1 million downloads, over 3,000 reviews, and a 3.5 rating overall. On the same platform, its audiobook and e-book app EVERAND, has over 10 million downloads, over 600,000 reviews, and a 4.5 rating overall.

Respondent registered both of the Disputed Domain Names on August 21, 2024; each is configured using the SCRIBD Mark followed by a descriptive term of similar connotation, and each resolve to inactive websites with no content. Complainant shows, however, with redacted email evidence that Respondent has used email addresses associated with the Disputed Domain Names to engage in a fraudulent email phishing scheme impersonating Complainant “to approach individuals and claim they represent Complainant under the false pretenses of a job offer in which Respondents use the Scribd Logo, Scribd Marks, and Scribd address in their email address, email signature, and on fake offer letters and ’Screening Questions’.” Complainant shows that in these letters and emails, “Respondents plagiarize real Scribd job postings, refer to themselves as ‘Scribd’, ‘the team’, both imaginary and real HR personnel at Scribd, and claim that they have the authority to hire on Scribd’s behalf.”

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Names. Complainant contends that the Disputed Domain Names are identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of each Disputed Domain Name; and that each Disputed Domain Name was registered and is being used in bad faith.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Procedural Issue

Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. Complainant requests the consolidation of the Complaint against the multiple Disputed Domain Name registrants pursuant to paragraph 10(e) of the Rules.

Respondents did not comment on Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing Complainant’s request, the Panel will consider whether (i) the Disputed Domain Names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2. Procedural efficiency also underpins panel consideration of such a
consolidation scenario.

As regards common control, the Panel notes that both Disputed Domain Names are registered on the same day August 21, 2024, and each is configured using the SCRIBD Mark followed by a descriptive term of

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similar connotation, which appended terms, “jobs” and “careers” respectively, Complainant contends are
synonyms for each other, suggesting they were “registered with a similar purpose in mind”, and each
resolves to an inactive website with no content.

As regards to fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides it is appropriate to consolidate the disputes regarding the nominally different Disputed Domain Name registrants (referred to below collectively as “Respondent”) in a single proceeding.

6.2 Substantive Issues

Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview 3.0, section 4.2.

Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of the probabilities that:

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii)      the Disputed Domain Names have been registered and are being used in bad faith.

The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below.

A. Identical or Confusingly Similar

To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Ownership of a nationally or regionally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of standing under paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds that Complainant has rights in the SCRIBD Mark through registration and use demonstrated in the record. The Panel also finds that each Disputed Domain Name is confusingly similar to the SCRIBD Mark. Notwithstanding the respective appended words “careers” and “jobs”, the SCRIBD mark is clearly recognizable within each Disputed Domain Name for purposes of meeting Complainant’s burden under the first element of the Policy.

Prior UDRP panels have also found the generic Top-Level Domains, such as “.com”, “.org”, and “.site”, being viewed as a standard registration requirement, may typically be disregarded under the first element analysis. WIPO Overview 3.0, section 1.11.1. See also Bentley Motors Limited v. Domain Admin / Kyle Rocheleau,

Privacy Hero Inc., WIPO Case No. D2014-1919.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

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.

While 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 often impossible 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. 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. See also Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that contends that none of the circumstances provided in paragraph 4(c) of the Policy for demonstrating Respondent’s rights to and legitimate interests in a domain name are present in this case. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Names such as those enumerated in the Policy or otherwise.

First, Complainant asserts that it has no commercial relationship with Respondent, who is not sponsored by or affiliated with Complainant in any way, nor has Complainant given Respondent authority or license to register or use the Disputed Domain Names. Prior UDRP panels have held “in the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

Second, Complainant contends nothing in Respondent’s WhoIs information, or any other publicly available source suggests Respondent is commonly known by any of the Disputed Domain Names, which evinces a lack of rights or legitimate interests under paragraph 4(c)(ii) of the Policy. Prior UDRP panels have held

where no evidence, including the WhoIs record for the disputed domain name, suggests that the respondent
is commonly known by the disputed domain name, then the respondent cannot be regarded as having
acquired rights to or legitimate interests in the disputed domain name within the meaning of the Policy
paragraph 4(c)(ii). See Scribd, Inc. v. Ma Thien Lieu, WIPO Case No. D2022-1667; Moncler S.p.A. v.
Bestinfo, WIPO Case No. D2004-1049.

Most importantly, Complainant contends Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services because, as Complainant’s evidence shows, the Disputed Domain Names are being used by Respondent to email individuals and convince them that they have been selected to apply for and/or work at Complainant’s company, under the guise of acting as Human Resources personnel. Complainant points out, for example, that the Disputed Domain Name <scribdcareers.com> “offers pay-per-click links to job recruitment and hiring websites and manipulates email recipients into believing that Respondents represent Complainant, for the purpose of identity theft, phishing, and/or engaging in other deleterious actions.”

On the undisputed record here, Respondent is using the Disputed Domain Names to further a fraudulent email phishing scheme to engage in illegal activity, such as identify theft and phishing, through impersonation of Complainant, harming both the victims of the illegal activity and Complainant’s own reputation. Such unauthorized use of the Disputed Domain Names is manifestly illegitimate.

The Panel finds the second element of the Policy has been established for each of the Disputed Domain
Names.

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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 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 also 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.

Complainant contends that Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business by configuring and registering each of the Disputed Domain Names that incorporates the SCRIBD Mark in its entirety with the addition of the terms, “careers” and “jobs”, in furtherance of a job offer

phishing scheme. Respondent has thereby registered disputed domain names which are both confusingly
similar to Complainant’s trademark, as well as its official domain name <scribd.com>, to perpetrate
fraudulent emails on unsuspecting job seekers. Prior UDRP panels have found a domain name was
registered in bad faith where the respondent registered the domain name for the purpose of intentionally
attempting to impersonate or mislead in order to commit fraud. See Houghton Mifflin Co. v. The
Weatherman Inc., WIPO Case No. D2001-0211; Marlink SA v. Sam Hen, Elegant Team, WIPO Case No.
D2019-1215; Beam Suntory Inc. v. Name Redacted, WIPO Case No. D2018-2861.

As discussed in greater detail in Section 4 and Section 6B above, Complainant shows in evidence in the annexes to its Complaint that Respondent used emails based on both of the Disputed Domain Names to further a fraudulent phishing scheme by impersonating Complainant, plagiarizing real Complainant job

postings, referring to themselves as both imaginary and real HR personnel at Complainant, and claiming that they have the authority to hire on Complainant’s behalf, which activities constitutes evidence of bad faith use. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel finds Respondent’s registration and use of the Disputed Domain
Names constitutes bad faith registration and use under the Policy. WIPO Overview 3.0, section 3.4. See
also On AG, On Clouds GmbH v. Web Commerce Communications Limited, Domain Admin,

Whoisprotection.cc / Christin Schmidt, Sandra Naumann, Jana Papst, WIPO Case No. D2021-2263.

The Panel finds the third element of the Policy has been established.

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 Names <scribdcareers.com> and <scribdjobs.com> be transferred to

Complainant.

/Scott R. Austin/
Scott R. Austin
Sole Panelist
Date: November 28, 2024