Scribd, Inc. v Robert Brink

WIPO Case No. D2024-4595

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Scribd, Inc. v. Robert Brink

Case No. D2024-4595

1. The Parties

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

United States.

The Respondent is Robert Brink, United States.

2. The Domain Name and Registrar

The disputed domain name <dlslideshare.com> is registered with URL Solutions, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 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 (URL Solutions, Inc./Private Whois, GLOBAL DOMAIN PRIVACY SERVICES INC) and contact information in the Complaint. The Center sent an email communication 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 amended Complaint on November 16, 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 November 20, 2024. In accordance with the Rules, 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 13, 2024.

page 2

The Center appointed Kathryn Lee as the sole panelist in this matter on January 2, 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 technology company which operates SlideShare, a hosting service for professional content including presentations, infographics, documents, and videos which can be viewed by subscribed users. SlideShare was officially launched at “ in 2006, then acquired by LinkedIn in

2012, and acquired by the Complainant in 2020. The Complainant has rights in 14 trademark registrations for SLIDESHARE worldwide, including Trademark Registration Number 4212895, registered in the United States on September 25, 2012; Trademark Registration Number UK00910853919, registered in the United
Kingdom on November 26, 2012; and Trademark Registration Number 1318353, registered in Mexico on

October 8, 2012.

The Respondent appears to be an individual with an address in the United States.

The disputed domain name was registered on January 4, 2021, and as of the date of the Complaint, displayed a content called “SLIDESHARE DOWNLOADER” which was described as an online service that allows users to download documents from the SLIDESHARE website for free.

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 the disputed domain name is nearly identical to the Complainant’s form of the term “downloader” followed by the Complainant’s SLIDESHARE mark in its entirety.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name and confirms that it has not authorized or licensed rights to the Respondent in any respect. The Complainant contends that the disputed domain name advertises a “SLIDESHARE DOWNLOADER” which purports to allow users to download copyrighted content from the Complainant’s platform without

subscribing to the Complainant’s services by acting as a proxy and manipulating the URL link; the
Complainant contends that this service is illegal and does not confer rights or legitimate interests on the
Respondent.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Complainant’s trademark rights to the SLIDESHARE mark goes back to 2006 while the disputed domain name was only registered in 2021, many years after the

Complainant’s rights in the SLIDESHARE marks. The Complainant also contends that the Respondent’s use of the disputed domain name shows that the Respondent was aware of the Complainant, and further, that such use is illegal and represents bad faith. Further, the Complainant contends that that the use redirects traffic away from the Complainant and the services that it offers, and that it also creates a likelihood of confusion with the Complainant’s services as to the source, sponsorship, affiliation, or endorsement of the website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

page 3

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 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.

Although the addition of other terms – here, “dl” – 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.

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.

Panels have held that the use of a domain name for illegitimate activity can never confer rights or legitimate interests on a respondent. Here, the Respondent was purported to allow users to download copyrighted content from the Complainant’s website without subscribing to the Complainant’s services by acting as a proxy and manipulating the URL link. WIPO Overview 3.0, section 2.13.1.

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.

page 4

In the present case, the Panel notes that the Respondent has used the disputed domain name to display
what it called the “SLIDESHARE DOWNLOADER” which allows users to download copyrighted content from
the Complainant’s SLIDESHARE website without subscribing to the Complainant’s services by acting as a
proxy and manipulating the URL link. Based on the manner of use of the disputed domain name, the fact
that the disputed domain name was registered in 2021 while the SlideShare service has been available since
2006, and the fact that the additional element in the disputed domain name “dl” is a commonly used
abbreviation for the term “downloader,” it is clear that the Respondent targeted the Complainant when
registering the disputed domain name.

Further, the disputed domain name has been used to allow users to illegitimately download copyrighted material from the Complainant’s SlideShare website. Panels have held that the use of a domain name for illegitimate activity constitutes 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 <dlslideshare.com> be transferred to the Complainant.

/Kathryn Lee/ Kathryn Lee Sole Panelist Date: January 16, 2025