ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION GrabTaxi Holdings Pte. Ltd. v. CÔNG TY CỔ PHẦN TẬP ĐOÀN TINO Case No. D2023-2831 1. The Parties Complainant is GrabTaxi Holdings Pte. Ltd., Singapore, represented by BMVN International LLC, Viet Nam. Respondent is CÔNG TY CỔ PHẦN TẬP ĐOÀN TINO, Viet Nam. 2. The Domain Name and Registrar The disputed domain name (the "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 July 3, 2023. On July 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 4, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Unknown / Registration Private) and contact information in the Complaint. The Center sent an email communication to Complainant on July 5, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 5, 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 Respondent of the Complaint, and the proceedings commenced on July 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 8, 2023. page 2 The Center appointed Marina Perraki as the sole panelist in this matter on August 18, 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. Procedural Issue: Language of the Proceedings Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The paragraph also provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. Notwithstanding the Registration Agreement being in Vietnamese, Complainant requested that English be adopted as the language of the present proceeding. The Panel considers the following assertions of Complainant: -the Domain Name is composed of English elements, among others, "grab", and "taxi" suggesting that the Respondent has the ability to communicate in English; - the Website is mostly in Vietnamese, but it still incorporates some elements in English; - from the Registrant's information, we understand that it is CÔNG TY CỔ PHẦN TẬP ĐOÀN TINO, having its website at "https://tino.org/". Per Complainant, this website is also displayed in English, clearly showing that the Registrant can communicate well in English; and - in addition, English is a common language in international business. The English language is also quite popular in Viet Nam, where the Respondent is located. The Panel notes, that per Complainant, if it had to translate the Complaint, Amended Complaint and subsequent communications in Vietnamese, such translation would entail significant additional costs for it and delay the proceedings. Furthermore, Respondent has been given an opportunity to object to the language of the proceedings being English through the submission of pleadings to the Complaint but has chosen not to respond. The Panel accepts Complainants' request and determines that the language of this proceeding will be English (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 4.5.1 and 4.5.2, Laverana GmbH & Co. KG v. Silkewang, Jiangsu Yun Lin Culture Communication Co., Ltd. / xia men yi ming wang luo you xian gong si, WIPO Case No. D2016-0721, eBay Inc. v. NicSoft, Antonio Francesco Tedesco, WIPO Case No. D2014-0812). 5. Factual Background Complainant is the intellectual property holding entity of a Southeast Asia leading technology company group that was founded in 2012 and is headquartered in Singapore. Complainant's group offers software platforms and mobile applications for, among others, ride-hailing, ride-sharing, food delivery, logistics services, and digital payment. This includes without limitation the mobile application under the name "Grab", first launched in June 2012, and having, per Complaint, a strong presence in Singapore and Malaysia, while also offered in neighboring Southeast Asian nations such as Viet Nam, Indonesia, Thailand, the Philippines, Myanmar, and Cambodia. On March 26, 2018, Complainant's group acquired Uber's operations in Southeast Asia, including Viet Nam. Complainant has consistently been ranked in CNBC's Disruptor 50 list of companies as one of the fastest growing and most innovative start-ups from 2017 to 2020 and as the top transportation company and second overall on Fast Company's "Most Innovative Companies" list for 2019. page 3 Complainant owns numerous trademark registrations for GRAB including the Viet Nam trademark registration No. 318225, GRAB (word), registered on April 16, 2019, for goods and services in international classes 9, 38 and 39. Complainant also owns the domain name registered on November 2, 1996. The Domain Name was registered on March 28, 2021, and leads to a website offering services that are directly related to Complainant's business ("the Website"). On the Website Respondent uses photos of cars with prominent GRAB logo. 6. Parties' Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant's contentions. 7. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Domain Name incorporates Complainant's GRAB trademark in its entirety. This is sufficient to establish confusing similarity. The addition of the terms "taxi" and "binh phuoc", which is a geographical location in Viet Nam, in the Domain Name, does not prevent a finding of confusing similarity (WIPO Overview 3.0, section 1.8). The generic Top-Level Domain ("gTLD") ".com" is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (WIPO Overview 3.0, section 1.11.1). The Panel finds that the Domain Name is confusingly similar to Complainant's trademark. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: page 4 (i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrated, the Domain Name is used to host the Website to impersonate Complainant and attempt to mislead Internet users into thinking that the services purportedly offered on the Website originate from Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest of Respondent (Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502). This, along with the fact that the Domain Name was registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; and Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation", are evidence of the registration and use of the Domain Name in "bad faith": (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted 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 page 5 or location or of a product or service on Respondent's website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because Complainant's mark had been used and registered by Complainant before the Domain Name registration, and noting the content of the Website, it is clear that Respondent had Complainant's mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). Furthermore, the content of the Website gives the impression that it originates from Complainant, containing a photo of a car prominently displaying Complainant's trademark and offering similar services, thereby giving the false impression that the Website is connected to Complainant. This further supports registration in bad faith reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (WIPO Overview 3.0, section 3.1.4). The above further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403). As regards to bad faith use, Complainant demonstrated that the Domain Name is employed to host a Website which provides services similar to those of Complainant. The Domain Name has been operated by intentionally creating a likelihood of confusion with Complainant's trademark and business. This further supports the finding of bad faith use (Arkema France v. Aaron Blaine, supra; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388; and WIPO Overview 3.0, sections 3.1.4 and 3.2.1). Last, the Panel considers also the apparent concealment of the Domain Name holder's identity through use of a privacy shield at the time of filing the Complaint, to be further indicative of bad faith (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364). Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith. Complainant has established Policy, paragraph 4(a)(iii) 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to Complainant. /Marina Perraki/ Marina Perraki Sole Panelist Date: September 1, 2023
Full & Egal Universal Law Academy