ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION GrabTaxi Holdings Pte. Ltd. v. LE BA THOM Case No. D2023-1362 1. The Parties The Complainant is GrabTaxi Holdings Pte. Ltd., Singapore, represented by BMVN International LLC, Viet Nam. The Respondent is LE BA THOM, Viet Nam. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 29, 2023. On March 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2023, the Registrar transmitted by email to the Center its verification response registrant and contact information for the disputed domain name which differed from the named Respondent (Withheld for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 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 April 13, 2023. 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 of the Complaint, and the proceedings commenced on April 14, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 5, 2023. The Center appointed John Swinson as the sole panelist in this matter on May 9, 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. page 2 4. Factual Background The Complainant is a Singapore company that was founded in 2012. The Complainant offers software platforms and mobile applications for ride-hailing, ridesharing, food delivery, logistics services, and digital payment. In 2018, the Complainant acquired Uber's operations in Southeast Asia, including in Viet Nam. In August 2022, the Complainant announced that it had reached a milestone on 10 billion rides and deliveries. The Complainant launched the Grab ridesharing app in June 2012 in Malaysia, and expanded to other countries in Southeast Asia, including to Viet Nam in 2014. The Complainant owns trademark registrations for GRAB in both word and logo format. An example of one of the Complainant's trademark registrations is Vietnamese Registration No. 318225 for GRAB that has a registration date of April 16, 2019. The disputed domain name was registered on July 5, 2021. The disputed domain name includes the terms "viet", "taxi" and "xeom". The term "viet" could be an abbreviation for Viet Nam. The term "xe ôm" is a common Vietnamese term for motorbike taxi. The Respondent did not file a Response, so little information is known about the Respondent. According to the Registrar's records, the Respondent has an address in Viet Nam. The disputed domain name resolves to a website in Vietnamese that promotes a ridesharing or taxi service in Binh Du'o'ng province in Viet Nam. This website includes the Complainant's trademark in the same logo format as registered and used by the Complainant. The website states that the Respondent's drivers separated from a "technology company" and now do freelance work. 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. Notably, the Complainant contents the Complainant is very well-known in Viet Nam where the Respondent conducts business. The Complainant has had trademark registrations in Viet Nam that were registered prior to the Respondent registering the disputed domain name. The Complainant also contends that the Respondent, who is offering the same services as the Complainant, registered and is using the disputed name to confuse consumers and to profit from this confusion. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and page 3 (iii) the disputed domain name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar It is well accepted that the first 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the GRAB mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms, such as "viet", "taxi" and "xe om", may bear on assessment of the second and third elements, the Panel finds the addition of such terms do 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. Based on the available record, the Panel finds the first 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. While 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 often-impossible task of "proving a negative", requiring information that is often 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the 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 Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Panels have held that the use of a domain name for infringing activity (e.g., the sale of counterfeit goods) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. See for example Alticor Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2021-4157 where the panel stated: "It seems to the Panel that paragraph 4(c)(i) cannot simply apply if a business exists which has deliberately adopted a confusingly similar version of another person's trademark as its name, otherwise the Policy would page 4 be inapplicable to all cases in which a respondent was operating a business, which is clearly not its intention. The words 'bona fide' must encompass the Respondent's knowledge and motives in choosing the name in question - if done deliberately to trade off, or take advantage of the Complainant's name or reputation, then the 'bona fide' requirement is not met." The Panel does not consider that the Respondent is using the term GRAB in a bona fide way. This is discussed further below in relation to the third element. Based on the available record, the Panel finds 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. The Panel considers that the record of this case reflects that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. The Respondent's conduct demonstrates the Respondent's knowledge of the Complainant and the Complainant's trademarks. The website at the disputed domain name includes the Complainant's logo. Photographs included on this website show drivers wearing shirts with the Complainant's logo and cars painted with this logo. Moreover, the Complainant is very well-known in Southeast Asia, including in Vietnam where the Respondent conducts its competing business. Based on the available record, the Panel finds the third element of the Policy has been established. 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 be transferred to the Complainant. /John Swinson/ John Swinson Sole Panelist Date: May 21, 2023
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