WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PT Aplikasi Karya Anak Bangsa v. JIM
Case No. D2021-0404
1. The Parties
The Complainant is PT Aplikasi Karya Anak Bangsa, Indonesia, represented by Strategic IP Information Pte Ltd., Singapore.
The Respondent is JIM, India.
2. The Domain Name and Registrar
The disputed domain name <gojek.vip> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2021 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 February 26, 2021.
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 March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on April 14, 2021. 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 in these administrative proceedings is an Indonesian technology company named PT Aplikasi Karya Anak Bangsa, which was established in 2009 and has grown to become in South-East Asia a leading on-demand multi-service platform and digital payment technology group doing business as “GOJEK” (inspired by the term “ojek” which signifies motorbike taxis in the Indonesian language).
The GOJEK “Super App” (a marketplace offering multiple services) comprises three platforms: consumer, driver, and merchant applications, which comprise more than twenty services offered to the public.
The GOJEK trademark has been recognized as one of the most famous brands in Asia and in the transportation and logistics businesses. The awards include The BrandZ Top 15 Most Valuable Indonesian Brands (2019), The Best Indonesia Mobile App (2015), and many others.
The Complainant is the registered owner of the trademark GOJEK in Indonesia, while in other countries it is registered in the name of its wholly owned subsidiary Velox Technology Holdings Pte. Ltd. Details of some of these trademark registrations are as follows:
Indonesian Trademark Registration No. IDM000623971, GOJEK APLIKASI KARYA ANAK BANGSA and Logo, registered on June 26, 2018, in Class 16;
Indonesian Trademark Registration No. IDM000637717, GOJEK and Logo, registered on January 9, 2019, in Class 28;
Indonesian Trademark Registration No. IDM000649207, GOJEK and Logo, registered on July 23, 2019 in Class 36;
Indonesian Trademark Registration No. IDM000617252, GOJEK APLIKASI KARYA ANAK BANGSA and Logo, registered on May 9, 2018 in Class 35;
International Trademark Registration No.1534773, GOJEK, registered on April 2, 2020 in Classes 9, 16, 18, 25, 35, 36, 38, 39 and 42;
Philippines Trademark Registration No. 1534773, GOJEK, registered on December 11, 2020 in Classes 9, 16, 18, 25,35, 36, 38 39 and 42;
Malasian Trademark Registration No. TM2019025698, GOJEK, registered on April 15, 2019 in Class 36.
The Complainant is the owner of the domain name <gojek.com> and operates in several social media sites which include the GOJEK trademark, such as “www.instagram.com/gojekindonesia”.
The disputed domain name <gojek.vip> was registered on December 15, 2020 and, while now inactive, at one time resolved to a website presented in Hindi and in English, which, as claimed by the Complainant, contained a fraudulent scheme offering monetary rewards for the recruitment of new members.
5. Parties’ Contentions
For over a decade the Complainant has been using the highly distinctive trademark GOJEK which is associated in the public mind exclusively with the Complainant.
The Complainant claims that the disputed domain name is confusingly similar with the trademark GOJEK in which the Complainant has rights; and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
More specifically, the Complainant has not authorized the Respondent to use its trademark either in whole or in part, in any manner whatsoever, including as a domain name.
Internet consumers are likely to deem the disputed domain name as a natural extension of the Complainant’s trademark, business name, and domain name, which is not the case.
Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the GOJEK trademark.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s GOJEK trademark.
The disputed domain name contains the Complainant’s trademark GOJEK in its entirety with the generic Top-Level Domain (“gTLD”) “.vip”. A gTLD is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the GOJEK trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name may relate is an official site of the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed domain name carries a high risk of implied affiliation.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade name and trademark GOJEK mentioned in Section 4 above (Factual Background) and the domain name <gojek.com> when it registered the disputed domain name on December 15, 2020. By that time, the Complainant had intensely used the trademark GOJEK and had received many awards relating to the strength of its brand.
By registering the disputed domain name the Respondent was targeting the Complainant and its business by incorporating the Complainant’s trademark GOJEK in its entirety with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademark for its own monetary benefit.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the Respondent registered and was using the disputed domain name intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used mark as to the source, sponsorship, affiliation, or endorsement of the website. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, UDRP panelists have found that non-use of a domain name does not prevent a finding of bad faith under the doctrine of “passive holding” when circumstances exist such as the distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that all these circumstances are relevant to this administrative proceeding and that the current non-use of the disputed domain name does not prevent a finding of bad faith in these circumstances (section 3.3 of WIPO Overview 3.0).
For the above reasons, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled.
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 <gojek.vip> be transferred to the Complainant.
Miguel B. O’Farrell
Date: April 21, 2021