The Complainants are GrabTaxi Holdings Pte. Ltd. (the “First Complainant”), Singapore, and GP Network Asia Pte. Ltd. (the “Second Complainant”), Singapore, both represented by Bird & Bird ATMD LLP, Singapore.
The Respondent is 谢春甫 (Xie Chun Fu), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on May 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on May 28, 2021. On May 27, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 28, 2021, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on July 1, 2021. 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 Complainants offer a software platform for ride-hailing, ride-sharing, logistics services, digital payment and other services. The Complainants expanded their offerings to include financial services starting with the launch of GrabPay wallet services in 2017, and the establishment of the Grab Financial Group (“GFG”) no later than 2018. GFG provides a range of financial services in Southeast Asia, including the services offered under its GrabPay, GrabFinance, GrabInsure, GrabInvest, and GrabRewards sub-brands. GrabFinance provides drivers, merchants, and enterprises greater access to a suite of financial services. The First Complainant owns multiple trademarks, including: - Singaporean trademark registrations numbers 40201608864P-01 and 40201608864P-02, both for GRAB, both registered from May 31, 2016, and specifying services in classes 38 and 39, and goods in class 9, respectively; - Chinese trademark registrations numbers 20207812, 20207813, 20207814 and 20207814A, all for GRAB in a fancy script, registered on July 28, 2017, February 21, 2018, June 28, 2018 and August 28, 2017, respectively, and specifying goods and services in classes 39, 38, 9 and 9, respectively; and - Singaporean trademark registration number 40202013431X for GRABFINANCE in a fancy script, registered from June 26, 2020, specifying goods and services in classes 9, 36, 38, 42. The registration procedures for this trademark were completed on January 14, 2021. The Second Complainant owns multiple trademarks, including Singaporean trademark registrations numbers 40201704816U and 40201724449S, both for GRABPAY, registered from March 22, 2017 and December 8, 2017, respectively, specifying goods and services in classes 9 and 36, and classes 9, 35, 36, 38, 39 and 42 respectively. The Second Complainant also filed Singaporean trademark applications 40202102595T for GrabFin and 40202102734S for GrabFin in a fancy script, on February 1, 2021 and February 3, 2021, respectively. Those applications are pending. The First Complainant has also registered the domain name The Respondent is an individual resident in China. The disputed domain name was registered on July 1, 2020. It does not resolve to any active website; rather, it is passively held. Prior to the filing of the Complaint, a person with the email username “Chunfux” and the alias “域师” (meaning “domain master” in Chinese) corresponded with the First Complainant. On January 6, 2021, Chunfux contacted the First Complainant via its website and invited it, if it was willing to “spend $30,000” on the GrabFinancial brand, to “configure” that brand with the disputed domain name. On February 28, 2021, Chunfux contacted the First Complainant again, indicating that the First Complainant could buy the disputed domain name directly. On March 5, 2021, the Complainants sent a cease-and-desist email to Xie Chun Fu at Chunfux’s email address. On the same day the Complainants received a reply from Chunfux’s email address, indicating that the sender’s client, not Xie Chun Fu, was the owner of the disputed domain name, that the owner authorized the sender (identified as “xuper”) to deal with domain name matters with full authority and that he was willing to conduct a friendly negotiation to transfer the disputed domain name, but the cost of the disputed domain name had to be paid. On March 24, 2021, the Complainants offered to reimburse the reasonable out-of-pocket expenses incurred in relation to the registration and transfer of the disputed domain name. On April 1, 2021, the Complainants received a reply from Chunfux’s email address declining that offer. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the GRAB trademark and identical to the GRABFIN trademark. The Complainants’ brand architecture comprises marks which incorporate the word “grab” either alone or as a prefix. Often, these marks also contain a descriptive secondary element as a suffix (e.g. “Finance”, “Insure”, “Invest”). The main component of the disputed domain name incorporates the GRAB trademark, alongside the element “fin”, which is an abbreviation for the descriptive word “financial”. The Complainants’ distinctive GRAB trademark remains clearly recognizable in the disputed domain name, which is itself identical to the GRABFIN trademark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is not being used for any legitimate purpose and is instead a pretext for the Respondent to demand an exorbitant sum from the Complainants in exchange for the sale and transfer of the disputed domain name. The Complainants are not aware of any evidence showing that the Respondent has been commonly known by the disputed domain name. The Respondent’s registration of the disputed domain name falsely suggests affiliation with the Complainants as the trademark owners, and cannot be considered fair. The Complainants have not given the Respondent any authorisation or consent to use their trademarks in any manner. The disputed domain name was registered and is being used in bad faith. Given the popularity and well-known status of the Complainants’ trademarks, by virtue of their trademark registrations as well as long-standing and widespread use of the same, it is clear that the Respondent had registered the disputed domain name in bad faith and in full knowledge of the Complainants’ rights, and now seeks to capitalize on it. The circumstances indicate that the Respondent acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainants for valuable consideration far in excess of the Respondent’s possible out-of-pocket costs directed related to the disputed domain name. B. Respondent The Respondent did not file a Response during the proceeding. However, in correspondence with the First Complainant prior to the filing of the Complaint, a person whose email username was “Chunfux”, who claimed to represent the disputed domain name owner, denied that his client had registered or used it in bad faith. He alleged that “grab” is a commonly used term in daily life and is not subject to the trademark or private rights of a company. The law of the People’s Republic of China stipulates that no individual organization can require any individual organization to transfer any legally compliant property. He threatened to report the Complainants to the police for blackmail or cyberviolence. 6. Discussion and Findings 6.1. Preliminary Issues A. Consolidation: Multiple Complainants The Complaint was filed by two complainants against a single respondent. Both Complainants are part of the same corporate group and each of them is the registered proprietor of trademarks that consist of or contain the word “grab”. The Panel finds that the Complainants have a common grievance against the Respondent and that it is equitable and procedurally efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as the “Complainant” except as otherwise indicated. B. Identity of the Respondent and Attribution of Pre-Complaint Correspondence Prior to the filing of the Complaint, the Complainant corresponded with a person whose email username was “Chunfux” and whose alias was “域师” (meaning “domain master” in Chinese). During the course of that correspondence, the sender of the emails claimed that an unnamed third party, not Xie Chun Fu, was the owner of the disputed domain name and had authorized the sender to negotiate a transfer of the disputed domain name, as set out in Section 4 above. According to paragraph 1 of the Rules, “Respondent” means the holder of a domain name registration against which a complaint is initiated. In the present case, the holder of the disputed domain name registration is identified in the Registrar’s private WhoIs database as “谢春甫” and its transliteration “Xie Chun Fu”. The amended Complaint identifies that person as the Respondent. Therefore, the Panel finds that the Respondent in this proceeding is indeed “谢春甫” (Xie Chun Fu). The Complainant submits evidence of pre-Complaint correspondence with a party that it alleges was the Respondent. However, the sender of those emails identified himself as “xuper” and appeared to deny that he was the Respondent. His email address also differed from the Respondent’s contact email address, although both addresses are in the same domain. According to paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. The Panel notes that the username of the email address used to correspond with the Complainant consists of a transliteration of the Respondent’s given names “春甫” (Chun Fu) and the initial of his family name “谢” (Xie). The Respondent’s name is not publicly available in the Registrar’s WhoIs database. The sender contacted the Complainant of its own initiative and asserted full authority to negotiate a transfer of the disputed domain name. The Respondent has not commented on these emails, even though copies were attached to the amended Complaint and notified to him. Therefore, the Panel finds that the four emails regarding the disputed domain name sent to the Complainant prior to the filing of the Complaint, as described in Section 4 above, are attributable to the Respondent, and the Panel will take those emails into account in the findings below according to their relevance, materiality and weight. C. Language of the Proceeding 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 proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that pre-Complaint correspondence between the Parties was in English and the disputed domain name is in English. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. The Parties corresponded in English prior to the filing of the Complaint, which indicates that the Respondent is able to communicate in that language, although the Respondent claimed to be using an automatic translation tool. In any case, despite the Center having sent the Parties notification of the Complaint and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not commented on the issue of language nor expressed any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the amended Complaint would create an undue burden and delay, whereas accepting it as filed without translation will not cause unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the GRAB trademark and in the GRABFINANCE in a fancy script trademark. Given that the Complainant’s applications to register GrabFin and GrabFin in a fancy script are still pending and the Complainant does not claim common law rights in these marks, the Panel will not consider them further. The Respondent argued in pre-Complaint correspondence that the Complainant had no rights in the word “grab” because it is a common word. However, the Panel notes that the trademark registrations for GRAB remain current, which demonstrates that the Complainant has rights in that mark. Whether the Respondent is using that word in accordance with its common dictionary meaning could be relevant to the second element, considered in Section 6.2B below, but the Respondent made no such argument. The disputed domain name wholly incorporates the Complainant’s GRAB trademark. The disputed domain name also incorporates the word “fin” which may also be understood as an abbreviation for the word “financial”. Given that the trademark remains recognizable within the disputed domain name, the Panel does not consider that the addition of this dictionary word prevents a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The disputed domain name includes a generic Top-Level Domain (“gTLD”) “.com”, which is a technical requirement of domain name registration. A gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first and third circumstances set out above, the disputed domain name does not resolve to an active website; rather, it is passively held. The Complainant submits that it has not given the Respondent any authorisation or consent to use its trademarks in any manner. There is no evidence that the disputed domain name is being used in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor is there any evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “谢春甫” (Xie Chun Fu), not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;” With respect to registration, the disputed domain name was registered in 2020, after the registration of the Complainant’s GRAB trademark, including in China where the Respondent is resident. The operative element of the disputed domain name is “grabfin” which is a coined word with no dictionary meaning that wholly incorporates the GRAB trademark, combining it with the word “fin”, which may be understood as an abbreviation of the dictionary word “financial”. Prior to the registration of the disputed domain name, the Complainant had already made widespread use of its GRAB mark, often in combination with descriptive words to form sub-brands, such as GrabPay. There appears to be little reason to register the disputed domain name other than to combine the GRAB mark with a descriptive word in the same way. Indeed, the disputed domain name was registered within days of the Complainant filing an application to register GRABFINANCE in a fancy script as a trademark. Moreover, in his email dated January 6, 2021, the Respondent specifically suggested that the Complainant acquire the disputed domain name for use in connection with its GrabFinancial sub-brand. The Respondent has provided no other explanation for his choice of the disputed domain name. Accordingly, the Panel finds that the Respondent targeted the Complainant’s GRAB mark when he registered the disputed domain name. As regards use, the disputed domain name does not resolve to any active website. However, given the Panel’s findings in Section 6.1B above, the evidence on record shows that the Respondent offered to sell the disputed domain name to the Complainant prior to this dispute for 30,000 dollars. Regardless of whether this price referred to Singapore dollars or United States dollars, the Panel considers this sum far in excess of the Respondent’s likely out-of-pocket costs directly related to the disputed domain name. In any case, the Respondent did not document any costs greater than that amount. As a result, the Panel considers that the circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of selling the disputed domain name registration to the Complainant or to a competitor of the complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name within the terms of paragraph 4(b)(i) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: July 14, 2021
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