GrabTaxi Holdings Pte. Ltd. v Phan Van Ngo

WIPO Case No. D2025-0965

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GrabTaxi Holdings Pte. Ltd. v. Phan Van Ngo

Case No. D2025-0965

1. The Parties

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

Nam.

The Respondent is Phan Van Ngo, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <grabdongnai.com> (the “Disputed Domain Name”) 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 10, 2025. connection with the Disputed Domain Name. On March 17, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On March 21, 2025, the Center informed the parties in Vietnamese and English, that the language of the registration agreement for the Disputed Domain Name is Vietnamese. On March 26, 2025, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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 March 27, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 16, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 22, 2025.

page 2

The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 1, 2025. 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

Founded in 2012, the Complainant is a leading Southeast Asia technology company group offering software platforms and mobile applications for, among other services, ride-hailing, ride-sharing, food delivery, logistics services and digital payment.

The Complainant owns various word and figurative trademarks for the GRAB mark globally. The relevant
trademark registrations include, inter alia, the Viet Nam Trademark Registration No. 4-0318225-000 for

GRAB in Classes 9, 38, and 39 registered on April 16, 2019, the Viet Nam Trademark Registration No. 4-

0368019-000 for “ ” in Classes 9, 12, 28, 35, 36, 38, and 42 registered on October 27, 2020, and the

Viet Nam Trademark Registration No. 4-0368018-000 for GRAB registered in Classes 9, 12, 28, 35, 36, 38, and 42 on October 27, 2020 (the “Complainant’s Trademark”).

The Complainant also owns a number of domain names that incorporate the GRAB mark, including
<grab.com>.

The Disputed Domain Name was registered on May 15, 2021, a couple of years after the Complainant first registered the Complainant’s Trademark. At the time of the filing of the Complaint and the rendering of this Decision, the Disputed Domain Name resolved to an active website (the “Respondent’s Website”) that

displays the Complainant’s Trademark and purportedly offers transportation services and food delivery

services which are directly related to the Complainant’s services.

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:

(a) The Disputed Domain Name is confusingly similar to the Complainant’s Trademark. The Disputed

Domain Name incorporates the entirety of the Complainant’s Trademark with the addition of the words disregarded in assessing confusing similarity under the first element.

“dongnai”. The addition of the term “dongnai”, which is a geographical location in Viet Nam (i.e., Dong Nai
Province), does not prevent a finding of confusing similarity between the Disputed Domain Name and the

(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no

relationship whatsoever between the Complainant and the Respondent and the Complainant has never authorized or licensed the Respondent to use the Complainant’s Trademark in any manner. There is no evidence that the Respondent has become commonly known by the Disputed Domain name. The

Respondent’s Website fails to accurately represent the lack of relationship between the Complainant and the Respondent. The Respondent’s actions do not constitute a bona fide offering of goods or services and instead appear to be an attempt to mislead and divert Internet users to the Respondent’s Website for commercial gain.

(c) The Respondent has registered the Disputed Domain Name and is using it in bad faith. Given the well-established reputation of the Complainant’s Trademark, the Respondent must have been fully aware of

page 3

the existence of the Complainant’s Trademark when the Respondent registered and used the Disputed Domain Name. The Respondent passed itself off as “Grab Dong Nai”, which can be easily confused as “Grab’s representative or branch in Dong Nai Province”, with an aim to create a likelihood of confusion with

the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's
Website. The Respondent also attempted to divert business away from the Complainant for the
Respondent’s own commercial gain by displaying the Complainant’s Trademark and the Complainant’s
advertising materials on the Respondent’s Website to create a false association between the Respondent’s

Website and the Complainant.

B. Respondent

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

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the Disputed Domain Name is Vietnamese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons. The Complainant submits that while the Respondent’s Website is mostly in Vietnamese, it still incorporates some elements in English which indicates that the Respondent can

communicate in English. The Complainant also submits that the English language is a common language in international business and is quite popular in Viet Nam, where the Respondent is located. The Complainant further claims that as it is a Singaporean entity it is not capable of providing the Complaint in Vietnamese. If the Complainant is required to prepare Vietnamese translation it would cause unduly delay and substantial

expenses will be incurred.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

The Panel is mindful of the requirement of paragraph 10(b) of the Rules which provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Panel observes that the Center has issued its case-related communications in both

Vietnamese and English. The Respondent has chosen not to participate in the proceedings, and it has been notified of its default in both Vietnamese and English.

Further, in ensuring fairness in the selection of language, the Panel shall take into consideration the parties’ level of comfortability with each language, as well as the expenses to be incurred and the possibility of delay in the proceedings if translation is required (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No.

D2003-0679
). In the present case, the Panel notes that although the Respondent appears to be located in ability to understand English. Furthermore, additional expenses will be incurred if the Complainant is required to submit documents in Vietnamese and the proceeding may otherwise proceed expeditiously in English.

page 4

Moreover, the Respondent did not object to the Complainant’s request to use English as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

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.

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 entirety of the Complainant’s Trademark is reproduced within the Disputed Domain Name. Furthermore, the generic TLD in this case “.com” may be disregarded for the purposes of assessing confusing similarity under the first element. Accordingly, the Disputed Domain Name is confusingly similar to the Complainant’s Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other term (here, “dongnai”) may bear on assessment of the second and third
elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between
the Disputed Domain Name and the Complainant’s Trademark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

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.

In the present case, the Respondent did not submit a Response. The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

The Panel notes that there is no evidence to show that the Respondent has trademark rights corresponding
to the Disputed Domain Name, or that the Respondent has become commonly known by the Disputed
Domain Name. The Panel further notes the distinctiveness and worldwide reputation of the Complainant’s
Trademark, and the fact that the Complainant has provided no license or authorization of any kind to the
Respondent to use the Complainant’s Trademark or to apply for or use any domain name incorporating the
Complainant’s Trademark. The Respondent would likely not have adopted the Complainant’s Trademark if

page 5

not for the purpose of creating an impression that the Disputed Domain Name is associated with, or impersonates or suggests sponsorship or endorsement by the Complainant.

originates from, the Complainant. The reproduction of the Complainant’s Trademark and the use of the term
“dongnai” in the Disputed Domain Name, as well as the use of the Complainant’s Trademark in the

There is also no evidence to suggest that the Respondent’s use of the Disputed Domain Name is in connection with a bona fide offering of goods or services or be regarded as legitimate noncommercial or fair use. The Respondent used the Respondent’s Website to impersonate or pass itself off as the Complainant by prominently featuring the Complainant’s Trademark, advertising services similar to the Complainant’s services, and allegedly displaying the Complainant’s advertising materials without any disclaimer clarifying the lack of relationship between the Complainant and the Respondent. The Respondent’s Website attempts to divert business away from the Complainant while capitalizing on the goodwill associated with the Complainant’s Trademark.

Panels have held that the use of a domain name for illegitimate activity, in this case claimed impersonation or passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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.

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.

In the present case, the Panel notes that it is difficult to conceive of any plausible use of the Disputed Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. Further, the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Name.

Domain Name by the unaffiliated Respondent that would amount to good faith use, given that the Disputed
Domain Name incorporates the Complainant’s Trademark in its entirety, and the Respondent’s Website
displays the Complainant’s Trademark and offers services similar to the services offered by the Complainant.
The Respondent registered and used the Disputed Domain Name to mislead and divert Internet users to the

Panels have previously held that a finding of bad faith can be established where a complainant’s trademark is shown to be well-known or in wide use at the time of registration of the disputed domain name (see LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091). The Respondent must have been aware of the

Complainant and the Complainant’s Trademark when registering and using the Disputed Domain Name being a website authorised or endorsed by the Complainant when it is not.
given the well-known nature of the Complainant’s Trademark and it was put into use well before the
Respondent registered the Disputed Domain Name. Moreover, the Respondent’s Website features the

page 6

Panels have held that the use of a domain name for illegitimate activity, in this case claimed impersonation
or passing off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel
finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the

Policy.

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 <grabdongnai.com> be transferred to the Complainant.

/Gabriela Kennedy/
Gabriela Kennedy
Sole Panelist
Date: May 16, 2025