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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scribd, Inc. v. Host Master, 1337 Services LLC

Case No. D2021-2590

1. The Parties

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

The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on August 25, 2021 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 August 28, 2021.

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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on December 6, 2021. 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

In March 2007, the Complainant launched an open publishing platform, and has since added a reading subscription service for books, audiobooks, sheet music, magazines and articles. Since 2007 the Complainant has served over 1,000,000 paying subscribers on its website at “www.scribd.com”.

The Complainant owns numerous trademark registrations and pending trademark applications worldwide for the word trademark SCRIBD, including United States Trademark Registration No. 3777227 (filed on August 3, 2009, and registered on April 20, 2010), and United States Trademark Registration No. 5898302 (filed on July 3, 2018, and registered on October 29, 2019).

The Complainant owns and operates the domain name <scribd.com>, created on September 24, 2006.

The disputed domain name was registered on July 3, 2020. The Complainant has provided a screenshot, taken on August 9, 2021, showing that the disputed domain name resolved to a website with the heading “Largest research databases on the internet”, and listing a large number of documents apparently available for download free of charge. At the time of this decision the disputed domain name resolved to a website that appeared to be the same as the one in the Complainant’s screenshot.

5. Parties’ Contentions

A. Complainant

The Complainant made the following contentions to establish that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has continuously used and owned trademark registrations for SCRIBD in connection with its computer software goods and services since at least as early as 2009. The disputed domain name incorporates and begins with the Complainant’s SCRIBD trademark in its entirety, and only adds the additional letter “x” at the end. Users encountering the disputed domain name will reasonably and mistakenly believe that the Respondent and/or its goods and services originate from, are associated with, or are sponsored by, the Complainant.

The Complainant made the following contentions to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered after the first use of the Complainant’s SCRIBD trademark, and after the Complainant’s domain name <scribd.com> was registered and the Complainant’s website at “www.scribd.com” was operational. By acting as a proxy, the disputed domain name permits users to download content “for the Complainant’s platform” without subscribing, thereby giving free access to copyrighted works that would only be accessible in full by paying for the Complainant’s subscription services, which is not a bona fide offering of goods and services. The Complainant is not aware of any trademark rights, domain name rights, or other rights that the Respondent has relating to the SCRIBD trademark, and the Complainant has never authorized the Respondent to use its SCRIBD trademark in connection with any goods or services. Additionally, nothing in the Respondent’s WhoIs information or any other publicly available source suggests that the Respondent is commonly known by the disputed domain name.

The Complainant made the following contentions to establish that the disputed domain name was registered and is being used in bad faith. The Complainant has been substantially, exclusively, and continuously using its SCRIBD trademark since at least as early as 2006, when it first acquired the domain name <scribd.com>, which is before the Respondent purchased/registered the disputed domain name. The Complainant therefore has senior trademark rights in the SCRIBD trademark. In February 2021, the Respondent began offering its users the ability to avoid paying the Complainant’s subscription fees by providing free download of copyrighted documents, and continues to do so. The Respondent’s posting of links that specifically target the Complainant proves that the Respondent was aware of the Complainant’s SCRIBD trademark and uses it for the purpose of misleading and diverting Internet traffic. It is well established that use of a disputed domain name in connection with a website offering goods and/or services competing with those of a complainant constitutes use of the disputed domain name in bad faith. The Respondent intentionally used a fictitious name, “Host Master”, in registering the disputed domain name. The Respondent’s apparent history of typosquatting has led to many decisions ordering transfer of domain names that were found to be registered in bad faith. The Respondent is using the SCRIBD trademark and the disputed domain name to redirect traffic away from the Complainant and the subscription services it offers. The Respondent has used the disputed domain name 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 SCRIBD trademark as to the source, sponsorship, affiliation, or endorsement of the website.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name consists of the whole of the Complainant’s registered word trademark SCRIBD, followed by the letter “x”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of the letter “x” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s SCRIBD trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its SCRIBD trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name.

The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website that appears to offer the ability to download articles, which is the business sector in which the Complainant operates. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, the Respondent’s use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use.

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its SCRIBD word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the disputed domain name consists of the Complainant’s trademark followed by the letter “x”, and that it has been used to resolve to a website offering goods or services similar to those offered by the Complainant. This is an attempt to attract, likely for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant and/or to disrupt the Complainant’s business.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <scribdx.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: December 20, 2021

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