GrabTaxi Holdings Pte. Ltd. v Ngo Trong Nghia
WIPO Case No. D2023-5106
•12-02-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
GrabTaxi Holdings Pte. Ltd. v. Ngo Trong Nghia
Case No. D2023-5106
1. The Parties
The Complainant is GrabTaxi Holdings Pte. Ltd., Singapore, represented by BMVN International LLC, Viet
Nam.
The Respondent is Ngo Trong Nghia, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <grapxemaybinhduong.com> is registered with iNET Corporation (the
“Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2023. On December 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing additional contact details. The Center sent an email communication to the Complainant on December 12, 2023, 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 December 14, 2023.
On December 12, 2023, the Center informed the parties in Vietnamese and English, that the language of the registration agreement for the disputed domain name is Vietnamese. On December 14, 2023, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the language of the proceeding.
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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2024.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 29, 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 is GrabTaxi Holdings Pte. Ltd., a company incorporated in the Republic of Singapore on
June 14, 2013.
The Complainant offers software platforms and mobile applications for, among other services, ride-hailing,
ride-sharing, food delivery, logistics services, and digital payment, including the mobile application named
“Grab”.
The Complainant has had a strong presence in Singapore and Malaysia, and its goods and services are also
extensively offered in Southeast Asian countries such as Viet Nam, Indonesia, Thailand, the Philippines,
Myanmar, and Cambodia.
The Complainant is the owner of several trademark registrations in Viet Nam, among others, the following:
Trademark No. Date of Jurisdiction
Registration Registration 4-0318225-
GRAB (combined) 000 Viet Nam April 16, 2019 4-0331702- Viet Nam September 30,
000 2019
4-0368019- Viet Nam October 27, 2020
000 4-0368018-
GRAB (combined) 000 Viet Nam October 27, 2020
The Complainant claims that it owns the domain name <grab.com>, which resolves to the Complainant’s official website.
The Respondent registered the disputed domain name <grapxemaybinhduong.com> on May 20, 2022. The disputed domain name resolves to a website in Vietnamese that offers similar services to those offered by the Complainant.
4.1 Language of the Proceedings
The Complaint was filed in English.
In accordance with paragraph 11 of the Rules, the language of the proceedings is to be Vietnamese, unless otherwise agreed by the Parties, and subject to the Panel’s decision, considering the circumstances of the case.
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In the Complaint, the Complainant requested English to be the language of the proceedings, arguing (i) that the Complainant being a Singaporean entity is not capable of providing the Complaint in the language of the registration agreement (i.e., Vietnamese) without unreasonable effort and costs, (ii) that as the services
offered on the website to which the disputed domain name resolves are related to the Complainant, which is a non-Vietnamese entity, the Respondent is likely familiarized with using English in his communications; (iii) that the possibility of the Respondent being familiarized with English could be even higher due to the fact that the website to which the disputed domain name resolves displays various contents and terms in English, and (iv) a Vietnamese version of the Complaint in this case will be unnecessary and will result in delay and
considerable and unnecessary expenses because the Respondent is familiarized with using English in his
communications.
The Respondent did not reply to the Complainant’s communication regarding the language of proceedings and did not file a Response. Therefore, there is no agreement between the Parties on the language of the proceedings.
On the balance of probabilities, and taking into account that the website to which the disputed domain name resolves comprises some terms in English, that the Respondent has chosen to register a domain name incorporating a typosquatted version of the Complainant’s trademark and that resolves to a website that references the Complainant (a Singaporean company where English is spoken), that the Complainant’s trademarks and its services which are widespread throughout a number of countries in Asia (where different languages are spoken and in which region English is de facto a lingua franca), as well as the fact that the Respondent has targeted the Complainant and its app, which main, original Singaporean version has a user interface in English, it is reasonable to infer that the Respondent can understand and communicate in English.
In order to preserve the spirit of the Policy, which is to provide an agile, expeditious, and low-cost proceeding, the Panel decides that, in accordance with the powers granted under paragraph 11 of the Rules, the language of the proceedings shall be English (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).
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 is the owner of the GRAB (and design) trademarks, as well as the rights related to the app and platform named Grab for transportation (ride bookings, ride-hailing, ridesharing), logistics, food delivery, courier services, online shopping, home cleaning and repair services, financial services such as e-payments and enterprise services.
The Grab App was first launched in June 2012. The Complainant expanded to the Philippines in July 2013; to Singapore and Thailand in October 2013; and to Viet Nam and Indonesia in the first half of 2014. The GRAB trademarks were first used in Viet Nam in February 2014. It expanded to Myanmar in March 2017, and to Cambodia in December 2017.
It has invested a significant amount of resources in marketing and promoting its goods and services under its trademarks. The GRAB trademarks have been continuously used in respect of the Complainant's goods and services in advertising and promotional materials, both online and offline; and its efforts are rewarded with
public recognition and awards.
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It has consistently been ranked in CNBC’s Disruptor 50 list of companies as one of the fastest-growing and most innovative start-ups from 2017 to 2020.
I. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademarks since it includes four components:
| - | (i) “grap” |
The substitution of the letter “b” for the letter “p” cannot prevent a finding of confusing similarity between the
GRAB trademark and this “grap” element. In fact, these letters have a similar visual appearance as the letter
“p” is considered an upside-down letter “b.“
| - | (ii) “xemay” |
That it is a Vietnamese word meaning “motorbike.”
| - | (iii) “binhduong” |
That it is a geographical location in Viet Nam.
| - | (iv) generic Top-Level Domain (‘gTLD”) “.com.” |
That only serves to indicate the type and code level of the domain name, and thus, does not help dispel
Internet users’ confusion.
The first-level portion of the disputed domain name contains the GRAB trademarks in their entirety, with a single typographical variation. The only differing letter, “p” instead of “b”, comprises an obvious and intentional misspelling of the GRAB trademarks, and is a substitution of similar-appearing characters and/or an inversion of the original letter “b”.
The addition of the components (ii) – (iv), each of which has a Vietnamese meaning that is descriptive of the services being offered that are similar to the Complainant’s services, does nothing to distinguish the disputed domain name from the Complainant’s GRAB trademarks and the disputed domain name.
The disputed domain name is confusingly similar to the Complainant’s trademarks and domain name such that consumers are likely to deem the use of “grapxemaybinhduong” by the Respondent as a natural extension of the Complainant’s trademarks/domain name, which is not the case.
II. Rights or Legitimate Interests
The Respondent has not been authorized by the Complainant to use its mark within the context of the disputed domain name.
The Complainant confirms that the Respondent is not contracted by or otherwise affiliated with the trademarks in any manner.
There is no evidence that the Respondent has become commonly known by reference to the disputed domain name.
There is no record showing that the Respondent has ever established a right to or legitimate interest in any domain name, trademark or trade name incorporating or similar to the GRAB trademarks.
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III. Registered and Used in Bad Faith
Within the website to which the disputed domain name resolves, the Respondent uses the GRAB trademarks to identify himself while offering transportation services. Such false reference and deliberate use of the GRAB trademarks with the intention to create an undue association between the Complainant and the Respondent clearly establishes that the Respondent is not using the disputed domain name for a bona fide offering of goods or services but is attempting to use said GRAB trademarks and the disputed domain name to redirect consumers to the Respondent's website for commercial gain.
The Respondent’s choice of the disputed domain name was not a coincidence, but rather an act of
bad faith because, notwithstanding the fact that the term “grab” has a common meaning in English (i.e., to
take hold of something or someone suddenly and roughly), it has been lawfully registered and used as a
trademark for unrelated goods and services by the Complainant and its licensees. The GRAB trademark,
therefore, has been perceived by the public as distinctive and highly associated with the Complainant’s
mobile app and platform to connect consumers with drivers and merchants for services such as
transportation (ride bookings, ride-hailing, ride-sharing), logistics, food delivery, and the like.
The Respondent's bad faith in the registration of the disputed domain name is established by the fact that the trade.
disputed domain name wholly and purposefully incorporates the term “grap” which is almost identical to the
Complainant's well-known and previously registered GRAB trademark and was registered by the
Due to the use of the “grap” element, which is almost identical to the GRAB trademarks, as a dominant constituent element of the disputed domain name, and the display of the GRAB trademarks on the website to which the disputed domain name resolves, a consumer will initially be confused as to the disputed domain name’s association with or as to a perceived sponsorship from the Complainant.
The Respondent, who runs his business in the same industry, must have had prior knowledge of the
Complainant’s GRAB trademarks before registering the disputed domain name on May 20, 2022, after the
GRAB trademarks were first registered and used in the world and in Viet Nam.
The Respondent was offering the same services (i.e., transportation including ride bookings, ride-hailing, and ride-sharing) as those that the Complainant has been providing to customers worldwide.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Given the Respondent’s failure to submit a Response, the Panel may decide this proceeding based on the
Complainant’s undisputed factual allegations, in accordance with paragraphs 5(f), 14(a), and 15(a) of the
Rules, (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO
Case No. D2006-0292).
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 that the Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
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The disputed domain name <grapxemaybinhduong.com> is confusingly similar to the GRAB trademark since the disputed domain name includes the term “grap”, which is almost identical to said GRAB trademark, with the difference of the letter “p” (instead of the “b”) at the end, which makes this a typical case of typosquatting,
considering that it is an intentional misspelling of the Complainant’s trademark (see section 1.9 of the WIPO Overview 3.0; see also Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333; Rolls-Royce plc v. John Holt., WIPO Case No. D2017-1842;
Mastercard Prepaid Management Services Limited v. Cash SDSD., WIPO Case No. D2020-1938; and ZB,
N.A., a national banking association, dba Zions First National Bank v. Sharon White, WIPO Case No.
D2017-1769).
Although the addition of other terms (here, “xemay” and “binhduong”) may bear on assessment of the
second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing
similarity between the disputed domain name and the mark for the purposes of the Policy. The inclusion of
the gTLD .com is irrelevant for purposes of analyzing confusing similarity. WIPO Overview 3.0, section 1.8.
Based on the available record, 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 to 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 to or legitimate interests in the disputed domain name such as those
enumerated in the Policy or otherwise.
According to the evidence filed by the Complainant, the website to which the disputed domain name resolves seems to be an online website, through which similar services of those offered by the Complainant are purportedly being offered.
Moreover, the Panel finds that the composition of the disputed domain name incorporating the Complainant’s “p”) and adding the terms “xemay” that is a Vietnamese word meaning “motorbike” and “binhduong” that is a geographical location in Viet Nam, points to an intention of the Respondent to confuse Internet users seeking for or expecting the Complainant.
Further, panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
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The Respondent’s use of the confusingly similar disputed domain name to resolve to a webpage offering taxi and transport services in direct competition with the services offered by the Complainant does not amount to a bona fide offering of goods and services. Rather, it appears that the purpose behind the Respondent’s
conduct is to appropriate the reputation of the Grab Group and the brand recognition of its GRAB trademarks
to increase the number of visitors to the Respondent’s website for commercial gain.
Based on the available record, 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.
The Complainant has ascertained its rights over the GRAB trademarks. The dates of registration of the
Complainant’s trademarks significantly precede the date of registration of the disputed domain name.
| 2022, long after the Complainant registered and began using the GRAB trademarks. The Respondent’s bad | In the present case, the Panel notes that the Respondent registered the disputed domain name on May 20, c/o Dynadot, WIPO Case No. D2019-0980). |
| The evidence submitted by the Complainant also shows that the Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating the impression among Internet users that said website is related to, associated with, or endorsed by the Complainant, which conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0.; see also trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014-0365; and Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260). | |
| Another indicator of bad faith is the pattern of cybersquatting in which the Respondent has engaged, considering that he has been named as a respondent in three other cases where he has targeted the Complainant (see GrabTaxi Holdings Pte. Ltd. v. Ngo Trong Nghia WIPO Case No. D2023-3021; GrabTaxi | |
| Holdings Pte. Ltd. v. Ngo Trong Nghia WIPO Case No. D2023-2920; GrabTaxi Holdings Pte. Ltd. v. Ngo Trong Nghia WIPO Case No. D2023-2829). | |
| Finally, panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods, impersonation/passing off, or other types of fraud) constitutes bad faith. (See the Panel’s determination on impersonation in the analysis of the second factor of the Policy, supra). WIPO Overview 3.0, section 3.4. | |
| Based on the available record, the Panel finds that the Complainant has established the third element of the Policy. |
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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 <grapxemaybinhduong.com> be transferred to the Complainant.
/Kiyoshi Tsuru/
Kiyoshi Tsuru
Sole Panelist
Date: February 12, 2024
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