GrabTaxi Holdings Pte. Ltd. v Ngo Van Hom

WIPO Case No. D2023-1363

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GrabTaxi Holdings Pte. Ltd. v. Ngo Van Hom

Case No. D2023-1363

1. The Parties

The Complainant is GrabTaxi Holdings Pte. Ltd., Singapore, represented by BMVN International LLC, Viet

Nam.

The Respondent is Ngo Van Hom, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <grabxemaytaxibinhduong.com> is registered with P.A. Viet Nam Company

Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2023. On March 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2023, 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 (Domain Admin, Domain Whois Protection Service) and contact information in the Complaint.

The Center sent an email communication to the Complainant on April 17, 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 April 18, 2023.

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 April 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2023.

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The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 19, 2023. 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 offers a software platform for ride-hailing, ride-sharing, logistics services, digital payment and other services. This includes without limitation the mobile application named “Grab”. The Complainant has had a strong presence in Singapore and Malaysia, and its goods and services are also offered in

neighboring Southeast Asian regions such as Viet Nam, Indonesia, Thailand, the Philippines, Myanmar, and
Cambodia.

According to the Complaint, 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 Viet Nam and Indonesia in the first half of 2014. The GRAB Trademarks were first used in Viet Nam in February 2014. Subsequently,

the Complainant expanded to Myanmar in March 2017, and Cambodia in December 2017.

The Complainant is the owner of the following trademarks:

- Vietnamese trademark registration number 4-0318225-000for GRAB (figurative), registered on April
16, 2019 for classes 9, 38 and 39 and GRAB (& design) registration number 4-0331702-000,
registered on September 30, 2019 for classes 9, 38 and 39;

- Singaporean trademark registrations numbers 40201608864P-01 registered on May 26, 2018 and
40201608864P-02 registered on January 18, 2019, both for GRAB, , and specifying services in
classes 38 and 39, and goods in class 9, respectively;

- Chinese trademark registrations numbers 20207812, 20207813, 20207814 and 20207814A, all for
GRAB in a fancy script, registered on July 28, 2017, February 28, 2018, June 28, 2018 and August 28,
2017, respectively, and specifying goods and services in classes 39, 38, 9 and 9, respectively,

The Respondent is an individual reportedly resident in Viet Nam.

The disputed domain name was registered on September 15, 2022, and it resolves to an online website offering allegedly the exact services (i.e., transportation including ride bookings, ride-hailing, ride-sharing) as the Complainant in the Vietnamese market using the Complainant’s mark without its authorization.

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 confusingly similar to its trademarks:

- the Respondent has no rights or legitimate interests in respect of the disputed domain name;

- the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

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6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which a complainant must satisfy in order to succeed. The
Complainant must satisfy that:

(i)        the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of such domain name; and

(iii)      the 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds 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 Panel finds the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

[While the addition of other generic terms like “xemay” (“motorbike” in Vietnmese), “taxi”, and the
geographical term “binh duong” (a province of Viet Nam) 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. 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.

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.

Having reviewed the 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 Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

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The Panel considers that the record of this case reflects that:

before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made
demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed
domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy,

and WIPO Overview 3.0, section 2.2.

the Respondent (as an individual, business, or other organization) has not been commonly known by the

disputed domain name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3.

the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at

issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the
disputed domain name.

Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, 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.

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 Panel considers that the record of this case reflects that:

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.

Based on the available record, 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 name, <grabxemaytaxibinhduong.com> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: June 1, 2023