GrabTaxi Holdings Pte. Ltd. v Tran Quoc An

WIPO Case No. D2023-5010

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GrabTaxi Holdings Pte. Ltd. v. Tran Quoc An

Case No. D2023-5010

1. The Parties

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

Viet Nam.

The Respondent is Tran Quoc An, Viet Nam.

2. The Domain Name and Registrar

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

(the “Registrar”).

3. Procedural History

The Complaint was f iled in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2023. On December 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which dif fered f rom 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 December 5, 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 6, 2023.

On December 5, 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 6, 2023, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on December 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on January 4, 2024.

The Center appointed Kaya Köklü as the sole panelist in this matter on January 17, 2024. The Panel f inds 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 a technology company with its registered seat in Singapore. Since more than 10 years, it provides sof tware platforms and mobile applications for services like ride-booking, ride-hailing, ride- sharing, food delivery, logistic and courier services and digital payment.

The Complainant is the owner of the GRAB and GRABFOOD trademarks. Among others, the Complainant is the registered owner of the Vietnamese Trademarks No. 4-0318225-000, registered on April 16, 2019, for GRAB, and No. 4-0339167-000, registered on December 9, 2019, for GRABFOOD, both of them covering protection for goods and services as protected in classes 9, 38 and 39 (Annexes 7 and 8 to the Complaint).

The Complainant further owns and operates various domain names incorporating its trademarks GRAB and

GRABFOOD, such as <grab.com> (Annex 12 to the Complaint).

The Respondent is reportedly located in Viet Nam.

The disputed domain name was registered on July 24, 2013.

Screenshots, as provided by the Complainant, show that the disputed domain name resolved to a website in Vietnamese language purportedly offering a portal for the registration of drivers in order to become a partner of the Complainant. The associated website allegedly invited Internet users to register or login by disclosing various personal data. The website provided for multiple features that create a look and feel as if it was operated by the Complainant, such as the prominent use of the Complainant word and figurative trademarks.

At the time of the Decision, the disputed domain name does not resolve to an active website anymore.

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.

B. Respondent

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

6. Discussion and Findings
6.1. 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 specif ied otherwise

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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, including the fact that the Respondent appears to be capable of reading and understanding the English language while the Complainant as an entity from Singapore has no knowledge of Vietnamese.

The Respondent did not comment on the Complainant’s request for the language of the proceeding be
English, even though invited by the Center in English and Vietnamese.

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).

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.

6.2. Substantive Issues

According to paragraphs 14 and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no substantive response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisf ied:

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

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

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

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulf illed, even if the Respondent has not substantively replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. WIPO Overview 3.0, section 4.3.

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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 the GRAB and GRABFOOD trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

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The entirety of the GRAB and GRABFOOD marks is reproduced within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “dangky” (which means “register” or “apply” in Vietnamese) and “Hanoi”, the name of Viet Nam’s capital city, may bear on assessment of the second and third elements, the Panel f inds 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.

The Panel f inds the f irst 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 of ten 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 satisf ied 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 phishing and related types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel f inds 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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that the Respondent must have had the Complainant and its GRAB and GRABFOOD trademarks in mind when registering the disputed domain name. It is obvious to the Panel, that the Respondent has deliberately chosen the disputed domain name to target and mislead third parties. Consequently, the Panel is convinced that the Respondent has registered the disputed domain name in bad faith.

With respect to the use of the disputed domain name in bad faith, the Panel f inds that the Respondent has intentionally registered the disputed domain name in order to generate traf f ic to its own website by

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misleading third parties in a false belief that the associated website is operated or at least authorized by the Complainant. Particularly, the inherently misleading nature of the disputed domain name and the overall design of the associated website, including the prominent use of the Complainant’s GRAB and GRABFOOD trademarks, indicates the Respondent’s intention to impersonate the Complainant, apparently for illegitimate purposes.

Panels have held that the use of a domain name for illegal activity, here, claimed phishing and other related types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel f inds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The fact that the disputed domain name currently no longer resolves to an active website does not prevent a f inding of bad faith.

The Panel f inds 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 <dangkygrabfoodhanoi.com> be transferred to the Complainant.

/Kaya Köklü/
Kaya Köklü
Sole Panelist
Date: January 31, 2024