The Complainant is Grabtaxi Holdings Pte. Ltd., Singapore, represented by Bird & Bird LLP, Singapore.
The Respondent is Sam Lim, Hong Kong, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2019. On July 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 8, 2019, 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 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Response was filed with the Center on July 30, 2019, of which the Center acknowledged receipt on July 31, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on August 7, 2019. 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 August 8, 2019, the Complainant indicated that it would like to file a supplemental filing, to which the Center replied, stating that “the Center will forward Supplemental Filing (if any) to the Panel, and it will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any”. No such filing from the Complainant was received by the Center by the date of this decision. 4. Factual Background
The Complainant, headquartered in Singapore, is a technology company that offers a software platform and mobile application for ride hailing, ride sharing, food delivery, logistics services, and digital payment. The Complainant was founded in 2012 in Malaysia and its goods and services have been expanded into South East Asia and Singapore.
The Complainant offers its products and services under the trade marks GRAB, GRABTAXI, GRABCAR, GRABNOW, GRABHITCH, GRABSHARE, GRABSHUTTLE, GRABCOACH, GRABSURE, GRABFOOD, GRABREWARDS, GRABEXPRESS and GRABADS. A list of the trade marks registered in Singapore was set out in the Complaint but with no dates of registrations. The Complainant submitted as evidence of its trade mark registrations, a trade mark status report printout from its legal representatives’ database rather than printouts from the databases of the relevant trade mark offices. The list of trade mark registrations provided included applications/registrations that pre-date as well as those that post-date the date of registration of the Domain Name.
The trade marks which pre-date the date of registration of the Domain Name as stated on the internal list for Singapore and Malaysia are the following:
Trade Mark
Class
Date of Application/Registration
Trade Mark No
Country
GRAB INC
9,39,42
June 8, 2015
40201509730Y
Singapore
GRABTAXI
9,42
June 8, 2015
40201509729V
Singapore
GRABTAXI
39
March 26, 2014
T1404773D
Singapore
39
March 26, 2014
T1404772F
Singapore
GRAB INC
42
March 4, 2015
201053258
Malaysia
GRAB INC
39
March 4, 2015
201053257
Malaysia
GRABTAXI
9
July 11, 2013
2013056818
Malaysia
GRABTAXI
38
July 11, 2013
2013056819
Malaysia
The trade marks which post-date the date of registration of the Domain Name as stated on the internal list for Singapore are the following (only the earliest date for each trade mark has been included):
Trade Mark
Date of Application/Registration
Country
GRAB
May 31, 2016
Singapore
November 3, 2017
Singapore
Grab Logo
February 3, 2016
Singapore
(series)
October 9, 2018
Singapore
GrabAssist
June 28, 2018
Singapore
GrabBike
June 12, 2018
Singapore
GrabCar
June 12, 2018
Singapore
GrabCoach
June 12, 2018
Singapore
GrabCycle
November 8, 2017
Singapore
GrabExpress
October 9, 2018
Singapore
GrabFamily
June 12, 2018
Singapore
GRABFOOD
August 1, 2017
Singapore
GrabFresh
August 20, 2018
Singapore
GrabHitch
June 12, 2018
Singapore
GrabNow
June 12, 2018
Singapore
GRABREWARDS
March 22, 2017
Singapore
GrabShare
June 12, 2018
Singapore
GrabShuttle
June 12, 2018
Singapore
GrabSure (Logo)
December 8, 2017
Singapore
GrabWheels
October 9, 2018
Singapore
JustGrab
June 12, 2018
Singapore
The Domain Name was registered on August 6, 2015 by the Respondent, a sole proprietor with addresses in Hong Kong, China, and Singapore. The Domain Name is connected to a website which offers on line printing services (the “Website”). It describes itself as follows: “ G is online Printing company in Singapore offers cheap, hassle free, offset printing, digital printing, inkjet printing, silkscreen printing, online shopping, online printing, name card printing, sticker printing, flyer printing, brochure printing, booklet printing, greeting card printing, banner printing and etc.”
There are customer reviews on the Website dating back to June 2016. The Website bears the following logo:
The Respondent has provided evidence of its application to register the above logo (the “Logo”) as a trade mark in Singapore under trade mark application number 4020190402T in class 40 on February 22, 2019. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Name should be transferred. Identical or Confusingly Similar
- The Domain Name is confusingly similar to the trade mark registrations that the Complainant owns for the family of trade marks which has “grab” either alone or as a prefix. In the case of marks where “grab” is a prefix, the suffix consists of a secondary descriptive element. The Domain Name follows the same structure.
- The Complainant also has achieved valuable and protectable goodwill in its trade marks by reason of its extensive use, advertising and promotion of its trade marks since 2012 in South East Asia and in Singapore since October 2013. Rights or Legitimate Interests
- The Respondent is not commonly known by the Domain Name. The Respondent had registered its business in Singapore under the name “Grabprinting” on June 12, 2016 for commercial printing but the business registration expired on April 12, 2019.
- The Respondent’s use does not amount to legitimate or fair use of the Domain Name. The incorporation of “grab” does not bear any descriptive or generic reference to the services concerned cannot be a mere coincidence. The Respondent has sought to trade on the Complainant’s goodwill and to divert consumers to its website by misleading them into believing that there is a commercial association or connection between the parties when this is not the case.
- The Complainant has not given the Respondent any authorization or consent to use its trade marks in any manner. Registration and Use in Bad Faith
- The Respondent must have been aware of the rights of the Complainant given the strong presence of the Complainant in Singapore and Malaysia where the Respondent is offering its services. Given the popularity and well-known status of the Complainant’s trade marks within the region, it is clear that the Respondent had registered the Domain Name in bad faith and in full knowledge of the Complainant’s rights.
- The Respondent is intentionally attempting to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites.
- The Complainant’s software technology and mobile application can be used to cater to all sorts of consumer needs offered online and through its software application. The Respondent’s Domain Name registration would preclude the Complainant from using its distinctive trade mark in conjunction with printing services which is consistent with the Complainant’s brand architecture.
- The Complainant has sent cease and desist letters prior to the filing of the Complaint and aside from brief email responses agreeing to “delete” the company name, the Respondent has failed to positively respond to the Complainant’s effort to make contact and such behavior provides strong support for a determination of bad faith registration and use. B. Respondent
The Respondent denies that the Domain Name should be transferred to the Complainant for the following reasons:
- The Respondent has applied to register the Logo as a trade mark at the Singapore IP Office on February 22, 2019 in class 40 for printing, offset printing, and digital printing.
- “grab” is a common dictionary word which includes the following meaning: “to have or take something quickly, especially because you are in a hurry” (Oxford Learner’s Dictionary).
- “grab printing” means a customer can quickly order their digital or offset printing online at any time of the day.
- The Logo includes Chinese characters, the translation of which means one stop online printing service.
- The Logo has four chimneys which symbolize the CMYK color model – the four ink plates of cyan, magenta, yellow, and black for printing.
- The Respondent’s business does not compete with the Complainant, with the latter being a technology company specializing in transportation and digital payment whilst the Respondent is an online printer.
- The Respondent does not offer any of the Complainant’s services on the Website.
- The Complainant has emailed the Respondent to sign up to their transport network to ferry their staff. 6. Discussion and Findings 6.1 General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith. 6.2 Substantive Analysis A. Identical or Confusingly Similar
The overall burden of proof in UDRP proceedings is on the Complainant. Whilst it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful in assessing the case merits and reaching a decision, a complainant relying on its registered trade mark rights ought to submit copies or printouts of public records evidencing such rights rather than relying on its internal records. This evidence is foundational to its case and there is no obligation on the part of the panel to do such research. In this case, the Panel did check the public records and is satisfied that the Complainant has established that it has registered rights to the trade mark GRAB and the variations of the trade mark including GRAB TAXI.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the Domain Name to determine whether the Domain Name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the Domain Name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the Domain Name. The fact that the trade mark post-dates the date of registration of the Domain Name is irrelevant under this element.
In this case the Domain Name contains the Complainant’s trade mark GRAB in its entirety and the descriptive word “printing”. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the trade mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyP,WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
From the evidence submitted by both parties, the Panel notes the following:
- Prior to the date of registration of the Domain Name on August 6, 2015, the Complainant has trade mark registrations in Singapore as well as several South East Asian countries and China for the trade marks GRAB INC and GRABTAXI (including in logo form) in classes 9, 39, and 42.
- The Complainant has contended that its trade marks have been extensively used and promoted in Singapore and South East Asia since at least 2012. It is clear that as at the date the Complaint was filed, the Complainant has extended its initial taxi services to include other services like food delivery and digital payment. However it has not in its submissions and evidence provided the timeline and details of when it moved from transportation services to other services and the extent of the use of its trade marks in relation to different services prior to August 6, 2015. The Complainant submitted many press articles about itself from newspapers in Singapore, Malaysia and other parts of South East Asia. The Panel has reviewed the articles written prior to August 6, 2015 and notes that:
- The Complainant is referred to as GrabTaxi or GrabCar.
- In July 2015, the Complainant was about to invest USD 100 million in an R&D Centre in Singapore.
- The Complainant raised USD 340 million in funding from investors in 2014 and 2015.
- The Complainant’s smartphone app was launched in Malaysia in June 2012 under the name “MyTeksi”.
- The Complainant was described as offering a free smartphone app which enables passengers to book a cab through any taxi company regardless of location and gives information on the route and fare.
- The Complainant is referred to as “GrabCar” in the Philippines.
- In May 2015, GrabCar + was introduced in the Philippines. Riders can use their credit cards to pay for their rides.
- In the Philippines in July 201, the Complainant launched a courier service called “GrabExpress”.
- In June 2015, the Complainant was tying up with a rental company to grow a fleet of on-call taxis.
From the above, it would appear that as at August 6, 2015, the Complainant’s reputation in Singapore and Malaysia was in the taxi and transportation business.
The Panel will consider each of the grounds in turn: Bona fide offering of goods or services
The Complainant stated that it sent its first cease and desist letter to the Respondent on February 22, 2019. No copies of the letters or any of the email responses which it said that the Respondent sent was submitted in evidence. Presumably, this is the date that the Respondent first had notice of the dispute. The Respondent, a sole proprietor, registered “Grabprinting” as his business name on June 12, 2016. From a search on the Internet Archive, the Respondent did as of January 26, 2016 have an active website offering printing services and has been doing so continuously since that date. This is confirmed by the customer feedback section on its current website which also dates back to 2016.
In administrative proceedings of this kind, a panel does not have the burden nor the benefit of cross examination to test the veracity of the parties’ claims. Even so, the panel is not of course bound to accept the assertions of either party uncritically. In the present case, there are a number of objective factors which the Panel has taken into account to assist in its finding that this case does not have the general indicia of typical cybersquatting cases.
This is a case where the Respondent clearly has an established business of at least three years. It would appear as if the services are genuine services. The Complainant has not submitted any evidence to suggest otherwise. The Respondent’s explanation that the choice of the name “Grabprinting” suggests that a customer can quickly order their digital or offset printing online at any time of the day is credible given the content of the Website.
The Complainant unfortunately has not addressed the fact that when the Domain Name was registered, it had not yet owned registered rights for GRAB on its own and it would appear that it had not yet extended its services outside of providing taxi and transportation services. This would therefore be prior to the establishment of its so-called “brand architecture”. The Complainant also has not addressed the fact that the Respondent’s current logo is very different from the Complainant’s trade marks.
The Respondent is highly likely to have known of the Complainant’s taxi services at the time of registration of the Domain Name. Perhaps he may even have had been “inspired” or influenced by one of the elements of the Complainant’s trade marks when adopting the Domain Name. However, that does not of itself render the services offered not to be bona fide especially since the word “grab” is in common usage, and is moreover descriptive of the Respondent’s printing services, meaning – “to have or take something quickly, especially because you are in a hurry”.
Even if the Respondent had done a trade mark search in Singapore and Malaysia at the time, he would have noted that the Complainant’s had trade marks for GRABTAXI and GRAB INC. which did not cover printing services. Further from the evidence submitted, at the time the Domain Name was registered, it would appear that the Complainant was well known only for its taxi service app. In the context, it would have been reasonable for him or his trade mark advisor to consider that the risks of adopting the Domain Name for his printing services would likely be manageable considering the Complainant’s trade mark rights at the time. Of course, such a conclusion would be different had his intention been to use the Domain Name in such a way as to confuse customers that it is somehow connected to the Complainant. If there is any evidence, it has not been submitted in this proceeding.
As the Domain Name is being used in connection with an apparently legitimate business which does not fall reasonably clearly within the Complainant’s proven rights, the Panel is satisfied that from the evidence submitted, this appears to be a bona fide offering of goods and services. Commonly known by the Domain Name
The Respondent registered “Grabprinting” as his business name in June 2016.
In the case of, Grundfos Holding A/S v. PrivacyP / Incredible SEO Mehul (Sailesh Patel / Ajay Soni),WIPO Case No. D2011-1355, the panel denied the transfer of the disputed domain name as it was of the view that the respondent was commonly known by the disputed domain name as an Internet search of “Groundforce Pumps” leads to a webpage describing respondent’s products.
The Respondent’s services are easily found on a Google search. The fact that the business registration expired in April 2019 does not make any material difference under this provision especially since the Respondent is still trading under this name rather than another name. The fact that the Respondent has applied to register a trade mark for the Logo does not assist him in this proceeding as the filing date coincides with the date of the alleged first cease and desist letter to the Respondent. In any event, the Panel is satisfied that the Respondent has been commonly known by the Domain Name.
Paragraph 4(c)(iii) is not relevant here as the Respondent is making commercial use of the Domain Name.
The Panel after considering all the arguments made and evidence submitted on both sides finds that the Complainant has failed to meet its burden under the second element. The Respondent has what appears to be an established legitimate business operation in the printing business. It has provided a credible explanation in relation to the adoption of the Domain Name. It has also provided evidence demonstrating bona fide use of the Domain Name for a period of about three years prior to the filing of the Complaint. C. Registered and Used in Bad Faith
In view of the Panel’s findings in relation to the second element under the UDRP, the Panel concludes that the Domain Name was not registered or used in bad faith. As stated in paragraph B above, the Respondent has provided a credible explanation of its adoption of the Domain Name. The registration of the Domain Name was made in good faith under the UDRP.
As for the use of the Domain Name, the Panel notes that the Website is providing a bona fide printing service. The Complainant has not submitted any evidence that in the three years of the Website’s operation that there has been any instances of confusion. The Complainant has not submitted any evidence to convince the Panel that the Respondent’s registration and use of the Domain Name was for the intent to attract for commercial gain users to its site by creating a likelihood of confusion with the Complainant’s GRABTAXI and GRAB INC marks as to source, sponsorship affiliation or endorsement. 7. Decision
For the foregoing reasons, the Complaint is denied.
Karen Fong
Sole Panelist
Date: September 2, 2019
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