Grabtaxi Holdings Pte. Ltd. v Vu Van Huyen

WIPO Case No. D2023-5105

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Grabtaxi Holdings Pte. Ltd. v. Vu Van Huyen

Case No. D2023-5105

1. The Parties

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

Viet Nam.

The Respondent is Vu Van Huyen, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <grabhanoi.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 December 7, 2023. On December 7 and 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11 and 13, 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.

On December 13, 2024, 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 14, 2024, the Complainant confirmed its request that English be the language of the proceeding. The Respondent expressed a preference for the proceeding being conducted in Vietnamese.

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 December 20, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2024. The Respondent did not submit any formal

response. Accordingly, the Center notified Commencement of Panel Appointment Process January 16,

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The Center appointed Evan D. Brown as the sole panelist in this matter on January 19, 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.

On February 19, 2024, in order to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Panel issued an Administrative Procedural Order (“Procedural Order”) that requested the Complainant to submit its legal analysis of the Complaint (the three elements argued in accordance with paragraph 4(a) of the Policy) translated into Vietnamese by February 24, 2024. The Procedural Order provided that the Complainant was permitted to use the assistance of translation tools publicly available online. The Procedural Order required the Respondent to respond to the Complainant’s contentions in either English or Vietnamese by the end of February. On February 23, 2024, the Complainant submitted a Vietnamese machine translation of the Complaint. The Respondent did not respond to the Complainant’s February 23 filing.

4. Factual Background

The Complainant is the intellectual property holding entity of what it describes as “Southeast Asia’s leading technology company group”, offering software platforms and mobile applications for ride-hailing, ride-sharing, food delivery, logistics services and digital payment. The Complainant owns a number trademarks throughout the world comprised of the word GRAB, and other formatives of the mark (the “GRAB Trademarks”). It enjoys the benefit of registration of these marks, including in Viet Nam, where the Respondent is located (e.g., Viet Nam Reg. No. 318225 for the mark GRAB, registered on April 16, 2019).

The WhoIs information shows that the disputed domain name was registered on September 1, 2020. offering services that are directly related to the Complainant’s business. The evidence submitted by the Complainant shows that on the website the Respondent refers to itself as “GrabHanoi” and expresses its purpose to form a community to share experience working as driver-partners for the Complainant. But, the Complainant asserts, the website fails to accurately represent that the Respondent is an independent business entity and that there is no relationship between the Complainant and the Respondent. Furthermore, the Panel notes that website at the disputed domain name including articles referring to companies different to the Complainant, such as Nhất Tín.

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 formally reply to the Complainant’s contentions or otherwise address the merits of the Complainant. It did, however, send a brief email to the Center on December 13, 2023 (1) stating a preference that the proceedings be conducted in Vietnamese, and (2) noting that the Respondent had offered to sell the disputed domain name to the Complainant but had received no response, and expressing confusion as to why the dispute was still ongoing.

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6. Discussion and Findings

A. Preliminary Matter: Language of the Proceedings

Paragraph 11(a) of the Rules provides that unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.

The Registrar has confirmed that the language of the Registration Agreement is Vietnamese. However, the Complainant submits that the language of the proceedings should be English because (i) the website under the disputed domain name displays various content and terms in English, including “category archives”,

“Grab new”, “Grab Driver”, “BestPrice”, and “Delivery Doodles”, (ii) the services offered relate to the delay and considerable and unnecessary expense, and (iv) the Respondent is likely familiar with using English in communications because English is a common language in international business and is popular in Viet Nam, where the Respondent is located.

Complainant, which is a non-Vietnamese entity, suggesting that the Respondent is familiar with using

Having reviewed these representations and considered the circumstances of the administrative proceeding, mind the use of certain English words on the website associated with the disputed domain name. Additionally, the requirement to translate the Complaint into Vietnamese would give rise to delay and avoidable expense which would be prejudicial to the Complainant.
and considering that the Respondent has been notified of the present proceeding in both English and
Vietnamese, the Panel determines that the language of the proceedings shall be English. The Complainant
has made a corresponding request, the disputed domain name is not rendered in the Vietnamese alphabet
(in other words, it is not an internationalized domain name which features the modified Latin script used in

The Respondent's own communications to the Center likewise indicate that conducting the proceedings in English is appropriate. Via email on December 13, 2023, the Center instructed the Respondent in Vietnamese that the Respondent could object to the proceedings being conducted in English and that it could submit arguments and supporting materials as to why the proceedings should not be conducted in English. On the same day, the Respondent sent an email to the Center asking the proceedings to be in the Vietnamese language, but submitted no arguments or materials as invited by the Center. It is worth emphasizing that the Respondent did not object expressly to the proceedings being in English, even though it knew it had the opportunity to do so. Moreover, in the same communication, the Respondent addressed the substance of the domain name dispute – it stated that it had previously asked the Complainant to purchase the disputed domain name but had heard no response. These communications contribute to the Panel concluding that it is likely the Respondent is aware of the nature of the proceedings and that conducting the proceedings in English is proper.

The Complainant’s subsequent filing of the legal argument in Vietnamese in accordance with the Panel’s these proceedings due to any language barrier.

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.

B. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 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. Id. This element requires the Panel to consider

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two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed

domain name is identical or confusingly similar to that mark.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
GRAB mark by providing evidence of its trademark registrations.

The disputed domain name incorporates the GRAB mark in its entirety with the term “hanoi”, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s GRAB mark. See WIPO Overview 3.0, section 1.8. The GRAB mark remains recognizable for a showing of confusing similarity under the Policy.

The Panel finds that the Complainant has established this first element under the Policy.

C. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

On this point, the Complainant asserts, among other things, that: (1) the Complainant and the Respondent have no prior official connection, and the Respondent has not been authorized by the Complainant to use its mark within the context of the disputed domain name, (2) there is no evidence that the Respondent has become commonly known by reference to the disputed domain name, therefore it is impossible to conceive of any circumstances in which the Respondent would use the disputed domain name, except in a deliberate attempt to take advantage of the GRAB Trademarks for commercial gain, (3) there is no record showing that the Respondent has ever established a right or legitimate interest in any domain name, trademark or trade name incorporating or similar to the GRAB Trademarks, and (4) the website published at the disputed domain name fails to accurately represent that the Respondent is an independent business entity and that there is no relationship between the Complainant and the Respondent.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent's favor.

Furthermore, the Panel notes the composition of the disputed domain name, wholly incorporating the to itself as “GrabHanoi” carries a risk of implied affiliation. see WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

D. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.

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Because the Complainant’s GRAB Trademarks are well-known and are subject to registration in many jurisdictions around the world, including the home country of the Respondent, it is implausible to believe that the Respondent was not aware of those marks when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name.

Bad faith use is clear from the Respondent’s activities of using the disputed domain name to operate a website offering services that are directly related to the Complainant’s business. The Respondent has not come forth with any explanation of any potential good faith use of the disputed domain name.

For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element.

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 <grabhanoi.com> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: March 8, 2024