GrabTaxi Holdings Pte. Ltd. v Vo Minh Truong

WIPO Case No. D2023-2883

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GrabTaxi Holdings Pte. Ltd. v. Vo Minh Truong

Case No. D2023-2883

1. The Parties

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

Nam.

The Respondent is Vo Minh Truong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <taxigrabbinhthuan.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 July 6, 2023. On July 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2023, 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.

The Center verified that 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 July 21, 2023. In accordance with the Rules, paragraph 5,
the due date for Response was August 10, 2023. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on August 17, 2023.

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The Center appointed Andrew F. Christie as the sole panelist in this matter on September 4, 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, founded in Malaysia in 2012, operates in more than 480 cities across eight countries in Southeast Asia. Through its proprietary mobile super-app and platform, it connects millions of consumers with millions of drivers and merchants. Services offered on its platform include, amongst others,

transportation (ride bookings, ride-hailing, ride- sharing), logistics, food delivery, courier services, online

shopping, home cleaning and repair services, financial services such as e-payments and enterprise services.

The Complainant is the owner of numerous registrations in a range of countries for trademarks consisting of
or incorporating “grab”, including Viet Nam Trademark Registration No. 40318225000 for the word trademark
GRAB (registered April 16 3, 2019) and International Trademark Registration No. 1213411 for the word
trademark GRABTAXI (registered May 20, 2014, and designating Viet Nam among other countries). The
Complainant is the registrant of numerous domain names incorporating “grab”, including <grab.com>.

The Respondent registered the disputed domain name on May 31, 2021. The Complainant has provided screenshots of the website to which the disputed domain name resolved on April 28, 2023, together with an English translation of its content. That website offered transportation services, including ride booking and taxi services. As at the date of this decision, the disputed domain name does not resolve to a functioning website.

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.

The Complainant made the following contentions, among others, to establish that the disputed domain name
is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name
incorporates the entirety of the Complainant’s GRAB trademark as its dominant element. The inclusion in
the disputed domain name of the word “taxi” and the word element “binhthuan” is not sufficient to prevent the
confusing similarity of the disputed domain name to the Complainant’s trademark, because the former is
descriptive of services offered by the Complainant under its trademark and the latter is descriptive of a
geographical location in Viet Nam in which the Complainant operates.

The Complainant made the following contentions, among others, to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent registered the disputed domain name after the Complainant registered its GRAB trademark. The Respondent has no connection with the Complainant, has not been authorized by the Complainant to use its trademark, is not commonly known by the disputed domain name, and owns no trademark registration for any portion of the disputed domain name.

The Complainant made the following contentions, among others, to establish that the disputed domain name was registered and is being used in bad faith. The Respondent’s choice of the disputed domain name is not a coincidence. Given the fame of the Complainant’s business, the Respondent must have had knowledge of the Complainant’s trademark prior to registering the disputed domain name. The Respondent has been

using the disputed domain name for commercial gain and to profit from the resulting consumer confusion of
the disputed domain name, or the website to which it resolves, with the Complainant.

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B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consist of the whole of the Complainant’s registered word trademark GRAB, with the addition of the word “taxi” and the geographical location “binh thuan”. The Complainant’s trademark is clearly recognizable within the disputed domain name. The additional terms, which describe a service provided by the Complainant under its trademark, and a location in which the Complainant operates, do not avoid a finding of confusing similarity of the disputed domain name with the Complainant’s trademark.

Accordingly, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

The Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its GRAB trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name.

The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website displaying the Complainant’s trademark, and offering services that compete with the services offered by the Complainant under its trademark. Given the confusing similarity of the disputed domain name to the Complainant’s trademark, the absence of any relationship between the Respondent and the Complainant, and the risk of implied false affiliation with the Complainant, the Respondent’s use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use.

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered a number of years after the Complainant registered its GRAB trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the disputed domain name consist of the Complainant’s

trademark with the mere addition of terms describing a service provided by the Complainant and a location in similarity of the disputed domain name to the Complainant’s trademark, any use of the disputed domain name by the Respondent almost certainly implies an affiliation with the Complainant that does not exist. The Respondent’s registration of the disputed domain name in these circumstances is a bad faith registration.

which the Complainant operates, and that the Respondent used the disputed domain name to resolve to a
website displaying the Complainant’s trademark and offering services competing with the Complainant.

Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name in an attempt to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. The Respondent’s use of the disputed domain name in this manner is a bad faith use.

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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, <taxigrabbinhthuan.com>, be transferred to the Complainant.

/Andrew F. Christie/
Andrew F. Christie
Sole Panelist
Date: September 18, 2023