WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grabtaxi Holdings PTE Ltd. v. Syed Javed Hussain
Case No. D2016-1855
1. The Parties
The Complainant is Grabtaxi Holdings PTE Ltd. of Singapore, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Syed Javed Hussain, IBN7 Media Group of Closter, United States of America ("United States"), self-represented.
2. The Domain Names and Registrar
The disputed domain names <grabrental.com>, <grabtaxi.me>, <mygrabcar.com>, <mytaxigrab.com>, <sggrabcar.com>, <teksigrab.com> are registered with Name.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2016. On September 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 16, 2016 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. An email from the Respondent was received by the Center on September 26, 2016.
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 of the Complaint, and the proceedings commenced on October 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2016. Upon request of the Respondent received via email by the Center on October 24, 2016, an automatic extension of the Response due date was granted until October 28, 2016 under paragraph 5(b) of the Rules. The Respondent did not file any Response. The Center notified the Parties of the commencement of the Panel Appointment process on November 1, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 3, 2016. 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
Background information is taken from the Complaint. The Complainant operates a ride-hailing platform in southeast Asia and makes use of a mobile device application known as "Grab". The Complainant is the owner of the following trademarks:
GRABTAXI, International Trademark registered May 20, 2014, with registration number 1,213,411, for services in class 39;
GRAB INC, International Trademark registered December 7, 2015 with registration number 1,291,169, for goods and services in classes 9, 39 and 42;
GRAB (stylised), Philippine Trademark, registered May 5, 2016, registration number 1198, for goods and services in classes 9, 38 and 39.
Little of significance is known about the Respondent except for the contact details provided to the Registrar at the time of registration of the respective disputed domain names, which were registered as follows:
registered February 22, 2016
registered August 14, 2015
registered August 11, 2015
registered January 21, 2016
registered August 14, 2015
registered January 21, 2016
In accordance with the evidence submitted with the Complaint, the disputed domain names resolve to a parking page.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights. The Complainant says its trademark is very well known world wide and has been actively promoted through its website at "www.grab.com" and on products, billboards and advertisements. The trademark has been used continuously since at least as early as 2013 and the trademark GRABTAXI was first registered in 2014.
The Complainant contends that the disputed domain name <grabtaxi.me> is identical to the Complainant's trademark GRABTAXI. The other disputed domain names all incorporate the Complainant's trademark word GRAB. The disputed domain name <teksigrab.com> incorporates the word "Teksi", which refers to the first name of the application developed by the Complainant in Malaysia, which was "Myteksi", the letters "my" referring to Malaysia.
The Complainant says the disputed domain name <grabrental.com> refers to the Complainant's rental vehicle business. The disputed domain name <mygrabcar.com> refers to Malaysia, to the Complainant's rental car business, and to the Complainant's service known as "GrabCar". The disputed domain name <mytaxigrab.com> incorporates the generic words "my", for Malaysia, and "taxi", referring to the Complainant's business, and the trademark GRAB. The disputed domain name <sggrabcar.com> incorporates the Complainant's trademark GRAB, the letters "sg" being the abbreviation for Singapore, together with the word "car" referring to the Complainant's business, and refers to the Complainant's service known as "GrabCar".
The Complainant submits that the words additional to its trademark appearing in the disputed domain names increase their confusion with the Complainant and its business.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has not been authorised to use the Complainant's trademarks and therefore there can be no actual or contemplated bona fide or legitimate use of the disputed domain names. The Respondent is not commonly known by the disputed domain names. The disputed domain names are not in legitimate or fair use and resolve to parking pages which may provide sponsored links including links to competitors of the Complainant.
The Complainant further contends that the disputed domain names were registered in bad faith. The websites to which the disputed domain names resolve, except for <grabrental.com>, provide links to competing taxi businesses such as Uber. The Respondent must have known and could not reasonably have been unaware of the Complainant and its trademarks at the time of registration of the disputed domain names. A simple Internet search or trademark search would have revealed the Complainant and its trademarks.
The Complainant says the disputed domain names are being used in bad faith. The Complainant is also prevented from registering the disputed domain names incorporating its trademark. The Respondent appears to hold hundreds of domain names including some that incorporate the trademarks of third parties, for examples <axaself.com>, <bmwberlinmarathon.com> and <shopvodafone.in>, constituting evidence of a pattern of preventing the owners of trademarks from reflecting their trademarks in corresponding domain names.
The Complainant says the disputed domain names are redirected to parking websites. It is submitted such use as redirection to a parking page can amount to registration and use in bad faith. It is not possible to imagine a plausible legitimate use of the disputed domain names by the Respondent, especially in view of the well-known character of the Complainant's trademark and the association of the disputed domain names with the Complainant's business.
The Complainant says the Respondent has intended to attract Internet users to the disputed domain names for commercial gain by creating a likelihood of confusion with Complainant's trademark. The Respondent could use the disputed domain names fraudulently, for example for "phishing" activities.
The Complainant has cited a number of previous decisions under the Policy that it considers to be favourable to its position.
The Complainant requests the transfer of the disputed domain names.
The Respondent has not formally responded to the Complainant's contentions. The Respondent sent an email to the Center dated October 24, 2016, which has been forwarded to the Panel and the Complainant, the substance of which it is appropriate to reproduce verbatim:
"We are hereby via this email asking you to grant EXTRA TIME to file the response of above referenced Complaint against our domains.
All of our so called "disputed domains" are generic and phrased on Common English words. Few months ago The Complainant Agent contacted us to buy the domains but perhaps our asking price was not agreeable to them so in turn they filed this Dispute to grab our domains. Anyhow I was out of country and could not get legal help to prepare my response. We are asking you to grant us one month extension of time".
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel has noted the Respondent's informal reply.
A. Identical or Confusingly Similar
The Complainant has produced evidence in the form of copies of online documents showing its ownership of the trademarks GRABTAXI, GRAB INC and GRAB as detailed in section 4 above.
The disputed domain name <grabtaxi.me>, disregarding the country code Top-Level Domain ("ccTLD") ".me", is found to be identical to the Complainant's trademark GRABTAXI in the terms of paragraph 4(a)(i) of the Policy.
The disputed domain names <grabrental.com>, <mygrabcar.com>, <mytaxigrab.com>, <sggrabcar.com> and <teksigrab.com> all contain the string "grab" in a clearly recognisable form. The generic Top-Level Domain ("gTLD") ".com" may be disregarded. These disputed domain names are found to be sufficiently similar to the Complainant's trademarks GRAB and GRAB INC to fulfil the requirements for confusing similarity under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has not been authorised to use the Complainant's trademarks and does not have rights or legitimate interests in respect of the disputed domain names.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your 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) you (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) you are 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 Complainant, in seeking to pre-empt any Response under paragraph 4(c) of the Policy, asserts that there can be no actual or contemplated bona fide or legitimate use of the disputed domain names by the Respondent because they contain the Complainant's trademark; that the Respondent is not known by the disputed domain names; and that the disputed domain names are not in legitimate or fair use but are parked and generally show sponsored links.
The Respondent has not formally contested the Complainant's assertions. The disputed domain names resolve to parking pages. The parking pages of <grabtaxi.me>, <mygrabcar.com>, <mytaxigrab.com> and <sggrabcar.com> offer links relating to taxis, car hire and involved companies such as Uber. The parking page of <teksigrab.com> has diverse links including "Porsche" and "Bike Helmets & Protective Gear". The parking page of <grabrental.com> shows it to be for sale. The Panel does not find evidence of intended use of the disputed domain names in connection with any bona fide businesses, or that the Respondent has been known by any of them, or that they are in fair or noncommercial use. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has the onus of proof under paragraph 4(a)(iii) of the Policy that a disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location".
The Respondent has asserted informally that the disputed domain names "are generic and phrased on Common English words". As the three member panel said in the decision in Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093, "The Policy was not intended to permit a party who elects to register or use a dictionary term as a trademark to thereafter bar others from using the term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner". The question is whether on the evidence, and on the balance of probabilities, the Respondent may be found to have targeted the Complainant and its trademarks.
The Complainant has produced in evidence a list of about 1,600 domain names held by the Respondent, from which it may reasonably be concluded that these are the Respondent's stock in trade for a business of selling or renting domain names. The warehousing of domain names for sale or lease, in and of itself, may be a legitimate business activity provided, in respect of any domain name, it does not infringe the Policy or the respective registrar's Registration Agreement. It may also reasonably be inferred on the balance of probabilities that the Respondent, having invested in 1,600 domain names, is diligent in matters of the saleability and market value of domain names.
There are several indicia that the Respondent was aware of the Complainant and its trademarks when registering the disputed domain names, which were all registered later than the trademark GRABTAXI. The disputed domain name <grabtaxi.me> is identical to the Complainant's trademark GRABTAXI. The disputed domain name <mytaxigrab.com> is essentially an anagram of GRABTAXI with the prefix "my", which may pertain to either "Malaysia" or "mine". The disputed domain names <mygrabcar.com> and <sggrabcar.com> incorporate the Complainant's featured service "GrabCar" with prefixes referring to "Malaysia" or "mine", or to "Singapore", respectively. The Complainant has stated that its service was initially known as "MyTeksi". An annexed Financial Times online article published on June 24, 2014 and titled "Southeast Asia's answer to Uber", by Ben Bland, refers to "GrabTaxi, known locally as MyTeksi"; and later, "With capital from the business school [...] they launched the MyTeksi app in Malaysia in June 2012". A Google search for "grab", made by the Complainant on August 16, 2016, listed a Google applications website of which the description included "[...] Grab (formerly GrabTaxi/ MyTeksi) [...]". The distinctive word "Teksi", together with the Complainant's trademark GRAB, are incorporated in the disputed domain name <teksigrab.com>.
Taking all the circumstances into account, and on the totality of the evidence, the Panel finds it more probable than not that the Respondent made a considered decision to acquire the particular disputed domain names and was aware of the Complainant and of its business and trademarks at the time. If not, he ought to have checked, in accordance with his obligation under paragraph 2 of the Policy "to determine whether your domain name registration infringes or violates someone else's rights".
The disputed domain names are for sale. Their respective parking pages state either "This website is for sale!" in the page title, or "The domain teksigrab.com (or other) may be for sale by its owner!" in the body of the page, or both of these. The apparent failure of negotiations between the Complainant and the Respondent for the transfer of the disputed domain names, summarised in the Respondent's own words as "perhaps our asking price was not agreeable to them", sufficiently indicates that the prices expected by the Respondent were above initial registration costs. On the evidence, the Panel finds the disputed domain names to have been registered primarily for the purpose of profitable sale or lease in the terms of paragraph 4(b)(i) of the Policy, constituting registration in bad faith.
The Panel finds that by the Respondent's registration of domain names such as <axaself.com>, <bmwberlinmarathon.com> and <shopvodafone.in>, containing respectively the well known trademarks AXA, BMW, BERLIN-MARATHON and VODAFONE, the Respondent has engaged in a pattern of blocking registrations, and has prevented the Complainant from registering the disputed domain names, incorporating its trademarks, constituting registration in bad faith under paragraph 4(b)(ii) of the Policy.
Screen captures produced by the Complainant show that the parking pages of the disputed domain names <grabtaxi.me>, <mygrabcar.com>, <mytaxigrab.com> and <sggrabcar.com> display advertising links to services in the nature of taxi hailing, particularly "Uber" and "Lyft". The parking page of the disputed domain name <teksigrab.com> displays six link headings including the transport related topics "Bike Helmets & Protective Gear" and "Porsche". The disputed domain name <grabrental.com> has a link which leads to "www.sedoparking.com", which belongs to the company Sedo that specialises in the monetisation and sale of parked domain names, and a link marked "Buy this domain" that also resolves to Sedo at "www.sedo.com". As the Sedo website explains, "You can make money without even lifting a finger! The idle domain is used to display relevant advertisements - every time a consumer clicks on one of the advertisements, you earn money". The Panel finds the disputed domain names to have been used with intent to attract Internet users for commercial gain by confusion with the Complainant's trademarks, constituting use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel further finds that the parking of the disputed domain names does not detract from the facts that they are in use as stock in trade for sale or lease and are in use for the purpose of earning pay-per-click revenue. It is not reasonably possible to conceive of a legitimate use for the disputed domain names in the hands of the Respondent that would not infringe the Complainant's rights. In all the present circumstances, the parking of the disputed domain names does not obviate a finding of use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). On the evidence and on the balance of probabilities, the Panel finds registration and use of the disputed domain names by the Respondent to have been in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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 names <grabrental.com>, <grabtaxi.me>, <mygrabcar.com>, <mytaxigrab.com>, <sggrabcar.com> and <teksigrab.com> be transferred to the Complainant.
Dr. Clive N. A. Trotman
Date: November 21, 2016