ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION GrabTaxi Holdings Pte. Ltd. v. Dao Minh Chung Case No. D2023-5008 1. The Parties The Complainant is GrabTaxi Holdings Pte. Ltd., Singapore, represented by BMVN International LLC, Viet Nam. The Respondent is Dao Minh Chung, Viet Nam. 2. The Domain Name and Registrar The disputed domain name is registered with P.A. Viet Nam Company Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2023. On December 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2023, 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. On December 6, 2023, the Center informed the parties in Vietnamese and English, that the language of the registration agreement for the disputed domain name is Vietnamese. On December 7, 2023, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. 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 in Vietnamese and English of the Complaint, and the proceedings commenced on December 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2024.
page 2 The Center appointed Evan D. Brown as the sole panelist in this matter on January 24, 2024. 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 Complainant is the intellectual property holding entity of what it describes as “Southeast Asia’s leading technology company group,” offering software platforms and mobile applications for ride-hailing, ride-sharing, food delivery, logistics services and digital payment. The Complainant owns a number trademarks throughout the world comprised of the word GRAB, and other formatives of the mark (the “GRAB Trademarks”). It enjoys the benefit of registration of these marks, including in Viet Nam, where the Respondent is located (e.g., Viet Nam Reg. No. 40318225000 for the mark GRAB, registered on April 16, 2019). The WhoIs information shows that the disputed domain name was registered on May 26, 2021. The Complainant asserts that the Respondent has used the disputed domain name operate a website offering services that are directly related to the Complainant’s business. The website features images bearing the Complainant’s GRAB mark. 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. B. Respondent The Respondent did not respond to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case. A. Preliminary Matter: 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 has confirmed that the language of the Registration Agreement is Vietnamese. However, the Complainant submits that the language of the proceeding should be English for the following reasons, namely (i) the website under the disputed domain name displays various content and terms in English, including “Online Users,” “Today’s Visits,” “Yesterday’s Visits,” and “Total Visits”; (ii) the services offered relate to the Complainant, which is a non-Vietnamese entity, suggesting that the Respondent is familiar with using English in communications; and (iii) a requirement to translate the Complaint into Vietnamese would
page 3 result in delay and considerable and unnecessary expense because the Respondent may be familiar with using English in communications. Having reviewed these representations and considered the circumstances of the administrative proceeding, the Panel determines that the language of the proceedings shall be English for the following reasons: (i) the Complainant has made a corresponding request; (ii) the Respondent has failed to reply to the Center’s communications relating to the language of proceedings and/or to the Notification of Complaint, both of which were issued in Vietnamese and English; (iii) the disputed domain name is not rendered in the Vietnamese alphabet (in other words, it is not an internationalized domain name which features the modified Latin script used in Vietnamese); (iv) it appears that the Respondent is likely to have some understanding of English, bearing in mind the use of certain English words on the website associated with the disputed domain name; and (v) bearing in mind the absence of a Response and indeed the absence of any communication from the Respondent in any language, the requirement to translate the Complaint into Vietnamese would give rise to delay and avoidable expense which would be prejudicial to the Complainant. B. Identical or Confusingly Similar This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 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. Id. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain name is identical or confusingly similar to that mark. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the GRAB Trademarks by providing evidence of its trademark registrations. The disputed domain name includes four components, namely: (i) “grap”, (ii) “nhontrach”, (iii) “dongnai”, and (iv) “.com”. The first portion of the disputed domain name contains a single typographical variation of the GRAB mark. The only differing letter, “p” instead of “b”, seems to comprise an intentional misspelling of the GRAB mark, and is a substitution of similar-appearing characters and/or an inversion of the original letter “b”. The Panel finds this sufficient for confusing similarity. The disputed domain name also incorporates additional terms which the Complainant asserts each have meanings in Vietnamese that are descriptive of the services being offered. The Panel finds that these other words do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s GRAB Trademarks. See WIPO Overview 3.0, section 1.8. The GRAB mark remains recognizable for a showing of confusing similarity under the Policy. The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element. WIPO Overview 3.0, section 1.15. In some instances, however, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Guided by these principles, the Panel takes note of the content of the Respondent’s website – which purports to provide services similar to those of the Complainant and bears the Complainant’s marks – to confirm the confusing similarity between the disputed domain name and the Complainant’s GRAB mark. The Panel finds that the Complainant has established this first element under the Policy.
page 4 C. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289. On this point, the Complainant asserts, among other things, that: (1) the Complainant and the Respondent have no prior official connection, and the Respondent has not been authorized by the Complainant to use its mark within the context of the disputed domain name, (2) there is no evidence that the Respondent has become commonly known by reference to the disputed domain name, therefore it is impossible to conceive of any circumstances in which the Respondent would use the disputed domain name, except in a deliberate attempt to take advantage of the GRAB Trademarks for commercial gain, (3) there is no record showing that the Respondent has ever established a right or legitimate interest in any domain name, trademark or trade name incorporating or similar to the GRAB Trademarks, and (4) the website published at the disputed domain name fails to accurately represent that the Respondent is an independent business entity and that there is no relationship between the Complainant and the Respondent. The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor. Accordingly, the Panel finds that the Complainant has established this second element under the Policy. D. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt 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 or location or a product or service on [the respondent’s] website or location”. Because the Complainant’s GRAB Trademarks are well-known and are subject to registration in many jurisdictions around the world, including the home country of the Respondent, it is implausible to believe that the Respondent was not aware of those marks when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent’s activities of using the disputed domain name to operate a website bearing the GRAB mark and offering services that are directly related to the Complainant’s business. The Respondent has not come forth with any explanation of any potential good faith use of the disputed domain name. For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element.
page 5 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. /Evan D. Brown/ Evan D. Brown Sole Panelist Date: February 8, 2024
Full & Egal Universal Law Academy