ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION GrabTaxi Holdings Pte. Ltd. v. Truong Quoc Khanh Case No. D2023-1449 1. The Parties Complainant is GrabTaxi Holdings Pte. Ltd., Singapore, represented by BMVN International LLC, Viet Nam. Respondent is Truong Quoc Khanh, Viet Nam. 2. The Domain Name and Registrar The disputed domain name is registered with Nhan Hoa Software Company Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2023. On April 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2023, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Registrar also confirmed that the language of the Registration Agreement is Vietnamese. On April 19, 2023, the Center sent an email communication to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date, the Center sent a Language of Proceedings email to the Parties. Complainant filed an amended Complaint on April 20, 2023. On the same date, Complainant requested that the proceedings be conducted in English and provided arguments to support its request. Also on the same date, Respondent sent an informal email to the Center. 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 Respondent of the Complaint, and the proceedings commenced on May 2, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2023. Respondent did not provide any Response. Accordingly, the Center notified the Parties of the Commencement of the Panel Appointment Process on May 25, 2023. page 2 The Center appointed Ingrida Kariņa-Bērziņa as the sole panelist in this matter on June 2, 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 Complainant is one of Southeast Asia's leading provider of a wide range of everyday services through a mobile super-app and platform. It connects customers to service providers offering transportation (ride bookings, ride-hailing, ridesharing), logistics, food delivery, courier services, online shopping, home cleaning and repair services, financial services such as e-payments and enterprise services. Established in Malaysia in 2012, it recently marked 10 billion rides and deliveries completed. Complainant offers its goods and services in more than 480 cities across eight countries in Southeast Asia, including Vietnam. Complainant is the proprietor of numerous registrations for marks comprising the element GRAB, including the following: - Vietnamese Trademark No. 318225 for GRAB (word mark), registered on April 16, 2019 for goods and services in classes 9, 38 and 39; - Vietnamese Trademark No. 1213411 for GRABTAXI (word mark), registered on May 20, 2014 for services in class 39; - Vietnamese Trademark No. 339168 for GRABCAR (word mark), registered on December 9, 2019 for goods and services in classes 9, 38 and 39. Complainant operates its primary business website at the domain name . Its app is called the "Grab App". The disputed domain name was registered on November 20, 2019. At the time of this Decision, it did not resolve to an active website. The record reflects that it previously resolved to a website of a "Grabcar" ride-sharing business aimed at the Vietnamese market. 5. Parties' Contentions A. Complainant Complainant's contentions may be summarized as follows: 1. Language of Proceedings The language of the registration agreement is Vietnamese. Complainant requests that the proceedings be conducted in English for the following reasons: Complainant as a Singaporean entity is not capable of providing Complaint in the language of the registration agreement (e.g. Vietnamese). Therefore, if Complainant is required to have the documents translated into Vietnamese, the proceeding will be unduly delayed, and Complainant will have to incur substantial expenses for translation. The disputed domain name is composed of English elements including "grab", "car", "online", suggesting that Respondent has the ability to communicate in English. page 3 The website under the disputed domain name is mostly in Vietnamese, but it still incorporates some elements in English. Some sections of the website use mixed English and Vietnamese words. Finally, English is a common language in international business. The English language is also quite popular in Vietnam, where the Respondent is located. The services provided by Respondent are closely related to Complainant's business, which requires Respondent to be able to communicate in English. Therefore, Respondent is likely familiar with using English in communications. 2. Substantive Issues Under the first element, Complainant states that the disputed domain name reflects Complainant's GRAB mark in its entirety, together with the element "car," which indicates a reference to Complainant's ride-hailing business. Complainant's GRAB mark has become well-known through extensive use across Asia. Under the second element, Complainant states that its rights in the GRAB mark predate the registration of the disputed domain name. The GRAB marks have acquired recognition through extensive use. Complainant and Respondent have no prior official connection, and Respondent has not been authorized by Complainant to use its mark within the context of the disputed domain name. Complainant confirms that Respondent is not contracted by or otherwise affiliated with Complainant, and Complainant has never licensed or authorized Respondent to use the GRAB mark in any manner. Respondent's website does not disclose that its ride-hailing business is not affiliated with Complainant, though the site contains several references to Complainant and its GRAB and GRABCAR marks. In addition, Respondent's website invites Internet users to apply to become drivers for Complainant's service. Under the third element, Complainant states that the disputed domain name wholly and purposefully incorporates Complainant's well-known and prior-registered GRAB mark, and it was registered by Respondent after Complainant's GRAB marks became widely known to consumers and the relevant trade. Complainant's use of the disputed domain name demonstrates bad faith for the following reasons: Respondent used its website as a portal for application to be Complainant's driver-partner. In this way, Respondent collected applicants' personal information (e.g., name, contact number, car registration number, etc.). The website passed itself off as an affiliate of Complainant by prominently using Complainant's GRAB and GRABCAR marks and posting Complainant's guidelines for drivers. Complainant requests transfer of the disputed domain name. B. Respondent Respondent sent the Center an informal email on April 20, 2023. The message stated (in English): "I'm not the owner of this domain name (grabcar.online), i'm just a buyer, please contact" and provided a name and e-mail address for a third party. 6. Discussion and Findings 1. Language of Proceedings Rule 11(a) 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated. As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due page 4 expedition. See, for example, Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251. In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must consider all relevant circumstances, including whether Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,(" WIPO Overview 3.0") section 4.5.1). The Panel notes that Respondent has provided an informal email communication in English, the disputed domain name consists of English-language words, and the website to which the disputed domain name resolved contains some elements in English. Respondent has not requested communication in any language other than English. On this record, the Panel is satisfied that there is sufficient evidence to indicate that Respondent would not be prejudiced if the proceedings were to be conducted in English. Accordingly, the Panel holds that the proceedings may conclude proceed in English and this Decision shall be rendered accordingly. 2. Substantive Issues Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. Under paragraph 15(a) of the Rules, "[a] Panel shall decide a 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 Complainant has provided evidence establishing that it has trademark rights in the GRAB mark through registration in Vietnam and other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1. In comparing Complainant's GRAB mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to this mark, as the mark is clearly recognizable within the disputed domain name, followed by a hyphen and the term "car." It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8. It is the well-established view of UDRP panels that a generic Top Level Domain ("gTLD") such as ".online" is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1. page 5 Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant to use its GRAB mark. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Other than claiming, without evidence provided, that it is "not the owner of this domain name", Respondent has not provided any response in rebuttal of Complainant's prima facie case and has therefore not proved rights or legitimate interests in the disputed domain name. The disputed domain name reflects Complainant's well-established GRAB mark in its entirety. Such composition cannot constitute fair use as it impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. The disputed domain name was used by Respondent to resolve to a website in which Respondent purported to recruit drivers for a "Grabcar" service in Vietnam. The website featured the GRAB mark and logo but does not alert Internet users to the fact that the entities are unrelated. The disputed domain name was registered after Complainant's establishment of rights in its GRAB mark across Asia. On this record, the Panel finds that the circumstances do not indicate that Respondent has established rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Complainant has demonstrated Respondent's bad faith registration and use of the disputed domain name. Complainant's rights in its GRAB mark predates the registration of the disputed domain name by several years. The disputed domain name reflects Complainant's GRAB mark in its entirety, together with the term "car", implying a connection to Complainant's business. The record reflects that Complainant's GRAB marks are widely known in Asia. Complainant had registered a GRABTAXI mark in Vietnam. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4. In this case, the record shows that Respondent deliberately targeted Complainant in incorporating Complainant's mark in the disputed domain name. The disputed domain name resolved to a website containing Complainant's mark and logo and attempting to give the impression that it was operated by a Vietnamese partner of Complainant. Respondent invited Internet users to provide personal information in applying to become drivers allegedly for Complainant's services. Accordingly, the Panel finds that Respondent attempted to impersonate Complainant for commercial gain by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website, indicating bad faith in registration and use of the disputed domain name. See WIPO Overview 3.0, sections 3.1.4 and 3.2.1. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name. page 6 The Panel therefore finds that Complainant has established the third element under 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 be transferred to Complainant. /Ingrīda Kariņa-Bērziņa/ Ingrīda Kariņa-Bērziņa Sole Panelist Date: June 16, 2023
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