Grabtaxi Holdings Pte. Ltd v Nguyen Cong Tien, Cong Tien

WIPO Case No. D2023-5107

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Grabtaxi Holdings Pte. Ltd v. Nguyen Cong Tien, Cong Tien

Case No. D2023-5107

1. The Parties

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

Nam.

The Respondent is Nguyen Cong Tien, Cong Tien, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <hotrograpdongnai.online> is registered with GMO Internet, Inc. d/b/a Discount-

Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed 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 disclosing registrant and contact information for the disputed
domain name which differed from the named Respondent (GMO-Z.com RUNSYSTEM JSC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on December 14,
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 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 January 3, 2024. In accordance with the Rules, paragraph
5, the due date for Response was January 23, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 26, 2024.

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The Center appointed Jeremy Speres as the sole panelist in this matter on February 9, 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

Established in 2012, the Complainant offers software platforms and mobile applications in Southeast Asia for, among other services, ride-hailing, ride-sharing, food delivery, logistics services, and digital payment, all under its GRAB trade mark. The Complainant’s GRAB mark has been found to be well known by prior panels under the Policy. See, for example, GrabTaxi Holdings Pte. Ltd. v. Truong Quoc Khanh, WIPO Case No. D2023-1449.

The Complainant’s GRAB mark is registered in numerous jurisdictions, including in Viet Nam under Trade
Mark Registration No. 318225 GRAB in classes 9, 38 and 39, with a registration date of April 16, 2019.

The disputed domain name was registered on March 26, 2022, and currently resolves to a “404 Not Found” website. The Complainant’s evidence establishes that the disputed domain name previously resolved to a website headed “Grap” using a logo and colour scheme that is almost identical to that of the Complainant’s website at “ The Respondent’s website was ostensibly for a ride-hailing, food and package delivery service. The website was populated with imagery that appears to have been copied from the

Complainant’s website, prominently featuring the Complainant’s GRAB trademark.

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 was registered and has been used in bad faith in order to benefit the Respondent commercially through Internet users being deceived into believing that the Respondent’s website is associated with the Complainant.

B. Respondent

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

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 Panel finds that the mark is recognisable within the disputed domain name. In accordance with section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. Here, the disputed domain name incorporates the Complainant’s GRAB mark but with the final letter “b” replaced by a “p”, representing an obvious misspelling of “grab”. The addition of other terms “hotro” and “dongnai” does not preclude a finding of

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confusing similarity. The nature of those additional terms will be analyzed further as they may bear on
assessment of the second and third elements. WIPO Overview 3.0, section 1.8.

The Panel’s assessment that the disputed domain name is confusingly similar to the Complainant’s mark is affirmed by a consideration of the historical content of the Respondent’s website, which, as discussed below, clearly shows bad faith targeting of the Complainant. WIPO Overview 3.0, section 1.15.

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 illegal activity, here, claimed impersonation, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. As discussed below, it is clear that the disputed domain name was registered and used in order to impersonate the Complainant.

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 use to which the disputed domain name has been put leaves it beyond doubt that the Respondent’s intention was to impersonate the Complainant for the Respondent’s commercial gain, falling squarely within paragraph 4(b)(iv) of the Policy. The general impression created by the Respondent’s erstwhile website is that it is an official presence of the Complainant’s ride-hailing, food and package delivery service. The use of a nearly identical mark – “Grap” versus “Grab” - as well as a nearly identical colour scheme and similar logo to those of the Complainant, and imagery sourced from the Complainant’s website featuring the Complainant’s trademark in the content of the website, clearly indicates impersonation.

The composition of the disputed domain name likewise points to targeting of the Complainant. The first component - “hotro” - is a Vietnamese word, correctly represented in Vietnamese as “hỗ trợ”, meaning “support” in English, which clearly has relevance to the Complainant’s business where support is required by its Internet users. The third component - “dongnai” – has geographical relevance as a province of Viet Nam

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– Dong Nai Province. The Complainant operates in Viet Nam, and the Respondent’s website clearly is
targeted at Internet users in Viet Nam.

Panels have held that the use of a domain name for illegal activity, here, impersonation, constitutes bad faith. WIPO Overview 3.0, section 3.4.

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 <hotrograpdongnai.online> be transferred to the Complainant.

/Jeremy Speres/
Jeremy Speres
Sole Panelist
Date: February 22, 2024