GrabTaxi Holdings Pte. Ltd. v Ngo Van Nghia

WIPO Case No. D2023-1628

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GrabTaxi Holdings Pte. Ltd. v. Ngo Van Nghia

Case No. D2023-1628

1. The Parties

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

Nam.

The Respondent is Ngo Van Nghia, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <grabhcm.online> 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 April 14, 2023. On April 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 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 amendment to the Complaint on April 26, 2023.

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 Complaint, and the proceedings commenced on April 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2023.

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The Center appointed Theda König Horowicz as the sole panelist in this matter on June 13, 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 was founded in Malaysia in 2012. It is a leading technology company in Southeast Asia. The Complainant offers software platforms and mobile applications for, among other services, ride-hailing, ride-sharing, food delivery, logistics services, and digital payment.

The Complainant is the operator of the mobile application named “Grab” which has been launched in 2012.

Since October 2013, the Complainant has had a presence in Singapore and Malaysia, and its goods and
services are also offered in neighbouring Southeast Asian nations such as Viet Nam (since 2014), Indonesia,
Thailand, the Philippines, Myanmar, and Cambodia.

The Complainant is the owner of many trademark registrations worldwide for GRAB and declinations of GRAB (such as “GrabTaxi”, “GrabCar”, “GrabFood” and “GrabExpress”), including but not limited to the Vietnamese trademark registration GRAB, with registration number 4-0318225-000, registered on April 16,

2019, hereinafter referred to as the “Trademark” and GRABTAXI No 1213411 registered on May 20, 2014.

The disputed domain name was registered on April 11, 2020 and currently resolves to a website containing information in Vietnamese and English and reproducing the Complainant’s GRAB logo and trademark. It also offers the same type of services than the ones of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant alleges to have registered trademark rights in GRAB which is an arbitrary trademark and is distinctive for the services offered by the Complainant. The disputed domain name contains its GRAB trademark in entirety and is a dominant element thereof. The additional element “hcm” can be deemed as a common abbreviation for Ho Chi Minh City, one of the biggest cities in Viet Nam, bearing in mind that the website content is partially in Vietnamese and is thus targeting the Vietnamese consumers. The remaining element “online” is irrelevant. The disputed domain name is therefore confusingly similar to the Complainant’s mark.

The Complainant also alleges that the Respondent has no rights or legitimate interests in the disputed domain name: he has no rights over the GRAB trademark and the Complainant did not give him a licence to use it. The Respondent is not known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name particularly since he is falsely representing himself as belonging to the Complainant’s business, is copying the layout of the Complainant’s official website, and is providing without authorization links to the official social media accounts of the Complainant thus misleading consumers as to a partnership between the Complainant and the Respondent, partnership which does not exist.

The Complainant states that its GRAB trademark is known by the public and widely exposed through its official website and social media. Its GRAB trademark predates the registration of the disputed domain name. Furthermore, the Respondent is using the disputed domain name for a website pretending to belong

to the Complainant’s business and adopting a layout which is identical to the layout of the Complainant’s official website. The website connected to the disputed domain name contains false information, notably false contact information. The link made between the Respondent’s non-authorized website and the official

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social media of the Complainant is a clear indication of bad faith use.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the

Policy, these Rules, and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i)        that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii)      that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Complainant has shown to have obtained trademark rights in GRAB and variations thereof in several jurisdictions of Southeast Asia including in Viet Nam where the Respondent is based.

According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test

typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark GRAB since it contains this mark in entirety. As stated by the Complainant, it is plausible that the addition of the letters “hcm” refer to Ho Chi Minh City in Viet Nam where the Respondent is

based and this addition does not change the Panel’s finding. Indeed, where the relevant trademark is
recognizable within the disputed domain name, the addition of other terms notably of geographical nature,

does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

The generic Top-Level Domain (“gTLD”) “.online” is viewed as a standard registration requirement, and as
such is typically disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO
Overview 3.0.

The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are fulfilled in relation to the disputed domain name.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes:

(i)        the use of the domain name in connection with a bona fide offering of goods or services; or

(ii)       being commonly known by the domain name; or

(iii)      the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1 of the WIPO Overview 3.0.

The Complainant has made sufficient submissions in order to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

In particular, the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks. name or that a legitimate business would be run by the Respondent under the disputed domain name.

The Panel therefore finds that the Complainant has established a prima facie case that the Respondent has
no rights or legitimate interests in the disputed domain name and the burden of production shifts to the
Respondent who has chosen not to reply.

The Respondent has not rebutted the Complainant’s prima facie case, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.

As already stated before, nothing is contained in the case file which would show that the disputed domain name has been legitimately noncommercial or fairly used by the Respondent or that the Respondent would have any rights or legitimate interests in the disputed domain name.

To the contrary, the Complainant has established that the Respondent resolved the disputed domain name to a website reproducing without authorization the trademark and logo of the Complainant. The website also copies the layout of the Complainant’s website and offers the same type of services. In summary, the Respondent appropriated itself and commercially uses, without authorization, the GRAB trademark on which the Complainant has exclusive rights.

The Panel thus concludes that the Respondent has no rights or legitimate interests over the disputed domain name and therefore finds that the conditions in paragraph 4(a)(ii) of the Policy are fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:

(i)        circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

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(ii)       the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii)      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the holder’s respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s respondent’s website or location or of a product or service on the holder’s respondent’s

website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name was registered and is being used in bad faith.

Given the circumstances of the case, including the fact that the disputed domain name entirely reproduces the Complainant’s GRAB trademark and that the Respondent offers the same type of services than the Complainant under the said name, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s trademark and business.

In this frame, the Panel notes that the Complainant has been active since 2014 in Viet Nam where the

Respondent is based and that the registration of the disputed domain intervened in 2020.

The Panel therefore finds that the disputed domain name was registered in bad faith.

The bad faith use condition is also fulfilled as the disputed domain name resolves to a website copying the layout and content of the Complainant’s official website. Furthermore, the Respondent inserted links to the said website to official social media accounts of the Complainant. Additionally, the website reproduces

references to “GrabFood”, a trademark and service of the Complainant. The Respondent thus creates on purpose the confusing impression for the consumers, particularly in Viet Nam since the website is both in English and Vietnamese, that this business is connected to the business of the Complainant, for commercial

gain.

By doing so, the Respondent obviously makes bad faith use of the disputed domain name.

The Panel therefore finds that the conditions in paragraph 4(a)(iii) of the Policy is fulfilled in relation to the disputed domain name.

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, <grabhcm.online> be transferred to the Complainant.

/Theda König Horowicz/
Theda König Horowicz
Sole Panelist
Date: July 11, 2023