Scribd, Inc. v Prabhat Doley
WIPO Case No. D2024-4596
•31-12-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Scribd, Inc. v. Prabhat Doley
Case No. D2024-4596
1. The Parties
The Complainant is Scribd, Inc., United States of America (“United States”), represented by IPLA, United
States.
The Respondent is Prabhat Doley, India.
2. The Domain Name and Registrar
The disputed domain name <slidesharedownloader.net> is registered with GoDaddy.com, LLC (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, to the Complainant on November 11, 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 November 14, 2024.
2024. On November 8, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 8, 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 (GoDaddy.com, LLC; Registration Private,
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 paragraph 5, the due date for Response was December 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2024. The Respondent sent various informal communications by email on December 18, 26, and 27, 2024.
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The Center appointed Alfred Meijboom as the sole panelist in this matter on December 17, 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 has been continuously using SLIDESHARE trademarks in connection with its computer software goods and services since at least 2006, and owns and operates the domain name <slideshare.net> since April 4, 2006.
The Complainant has provided evidence reflecting the assignment of 14 trademark registrations for related goods and services, including:
- United States trademark SLIDESHARE, with registration number 4212895, registered on September 25, 2012, for goods and services in classes 9, 35, and 42, claiming a date of first use of October 4, 2006.;
and
| - | Indian trademark SLIDESHARE, with registration number 2326000, registered on May 3, 2012, for |
goods and services in classes 9, 35, and 42.
The Respondent registered the disputed domain name on December 15, 2023. The disputed domain name resolves to a website which offers Internet users the ability to download copyrighted content from the Complainant’s platform. This website advertises it is the “Fast & Easiest Way to Download Slideshare Slide and Presentations” and features pay-per-click advertisements and links to other PDF-downloading and viewing websites.
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 it has continuously used its registered SLIDESHARE trademarks in connection with its computer software goods and services since 2006. The disputed domain name is nearly identical to the Complainant’s domain name <slideshare.net> and incorporates its SLIDESHARE trademark. The addition of the term “downloader” does not distinguish the disputed domain name from the
Complainant’s trademarks but rather increases the potential that Internet users will be confused.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent uses the disputed domain name to resolve to a website which enables Internet users to download content from the Complainant’s platform without subscribing by acting as a proxy and manipulating the URL link, and which creates free access to copyrighted works that would otherwise be accessible only by paying for the Complainant’s services. This is an illegal activity that can never confer rights or legitimate interests on a respondent. The Complainant also contends that the Respondent lacks any trademark rights, domain name rights, or other rights relating to the SLIDESHARE mark, nor has the Complainant ever authorized the Respondent to use the SLIDESHARE trademarks in connection with any goods or services.
The Complainant has been continuously using the SLIDESHARE trademarks since 2006, and registered the SLIDESHARE trademarks in 2012, it has senior trademark rights over the Respondent when it registered the
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disputed domain name. The Complainant contends that, upon registering the disputed domain name, the Complainant’s services by acting as a proxy and manipulating the target URL to allow for the free access and download of copyrighted documents that are ordinarily restricted to subscribers to the Complainant’s website, which leaves no doubt that the Respondent was aware of the Complainant. According to the Complainant, the disputed domain name was therefore registered in bad faith. The Complainant further contends that the Respondent is using the SLIDESHARE trademarks and the disputed domain name to redirect traffic away from the Complainant and the services it offers, so 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 Complainant’s SLIDESHARE trademarks as to the source, sponsorship, affiliation, or endorsement of the website.
B. Respondent
In the Respondent’s informal communications of December 18, 26, and 27, 2024, the Respondent stated as follows:
| - | December 18, 2024, “[expletive] yourself”. |
- December 26, 2024, “Sir I would like to know why my domain slidesharedownloader.net is disputed I
have bought it in GoDaddy and I don't think that it is infringing on any entity. Can you please make it clear
what should I do.”
| - | December 26, 2024, “If the arbitrator want the domain I can give it I just need $500.” |
| - | December 27, 2024, “i have registered the domain on 2023-12-15 with godaddy. i don't have any |
intent to infringe on any entity.the domain is registered and i am not misusing it .the domain is monetized
legally using google adsense . i dont intent to harm anybody.”
6. Discussion and Findings
The Respondent did not file a formal Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the
Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. The Panel may draw appropriate inferences from the Respondent’s default. Paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name 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 3.0, section 1.7.
Based on the available record, the Panel finds the first element of the Policy has been established because the SLIDESHARE trademark is wholly incorporated and recognizable within the disputed domain name.
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Accordingly, the disputed domain name is confusingly similar to the SLIDESHARE trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The addition of the term “downloader” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark 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.
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.
More notably, the Respondent has not refuted the Complainant’s allegations that the Respondent has not been commonly known by the disputed domain name, that the Respondent’s use of the SLIDESHARE trademarks was not authorized or licensed by the Complainant, and that the Respondent’s use of the disputed domain name to enable Internet users to allegedly download content from the Complainant’s platform without subscribing does not constitute a bone fide offering of goods and services as it in effect redirects Internet users seeking the Complainant due to the implied affiliation found in the composition of the disputed domain name and instead diverts those Internet users to the Respondent’s competing services.
The Respondent’s informal communication of December 27, 2024 only reinforces the Panel’s finding since it reflects the Respondent’s intent to monetize the disputed domain name for the Respondent’s benefit, having stated that the disputed domain name is being monetized and also offering the disputed domain name for
sale.
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 Respondent, when it registered the disputed domain name, must have been aware of the SLIDESHARE trademark because the Respondent, upon registration of the disputed domain name that includes the SLIDESHARE mark in its entirety, targeted the Complainant by
offering allegedly free downloads from the Complainant’s platform. The Respondent’s conclusory assertion
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that it does not intend to infringe on “anyone” falls flat in face of the clearly targeting content hosted at the
disputed domain name that directly refers to the Complainant and its services.
Panels have held that the use of a domain name for illegitimate activities, as put forward undisputedly by the Complainant and identified by the Panel in paragraph 6.B above as not creating rights or legitimate interests for the Respondent, constitutes bad faith. WIPO Overview 3.0, section 3.1.4. Moreover, the Respondent’s
emails also reflect the monetization of the disputed domain name and intent to benefit from the resale of the disputed domain name for a price, without evidence to the contrary, likely exceeding the Respondent’s out of pocket expenses, all of which reinforces the Panel’s bad faith finding.
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 <slidesharedownloader.net> be transferred to the Complainant.
/Alfred Meijboom/
Alfred Meijboom
Sole Panelist
Date: December 31, 2024
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