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11 July, 2016
In a dispute before the Kuala Lumpur office of the Asian Domain Name Dispute Resolution Centre, the Panel allowed the transfer of the domain name <grab.taxi> to the Complainant.
The Complainant was GrabTaxi Holdings Pte. Ltd, which operated a mobile taxi booking application in Southeast Asia. The Complainant was the registered owner of a few trademarks, namely, “GRABTAXI”, “GRAB TAXI” and the “GrabTaxi Logo” (“GrabTaxi Trade Marks”), in various jurisdictions.
The Respondent was an individual, Hoong Ann Lim, whose registered address was in Malaysia. The disputed domain name was <grab.taxi>, registered by the Respondent on 18 August 2015.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three elements:
(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the
complainant has rights; and
(ii) The 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
Regarding the first element, the Panel found that the Disputed Domain Name was identical or nearly identical to the Complainant’s GrabTaxi Trade Marks. It was clear that the Complainant had registered the GrabTaxi Trade Marks prior to the Respondent’s registration of the Disputed Domain Name. Importantly, the Panel expressed that the top-level domain .TAXI could play a part in creating confusion in cases where the top-level domain adds significance, or relates to the product and services of the complainant. The Panel cited a case on this point which was handled by Hogan Lovells (see WIPO Case No. D20140206: Canyon Bicycles GmbH v. Domains By Proxy, LLC/ Rob van Eck).
The Panel was also convinced that the “dot” between the words “grab” and “taxi” in the Disputed Domain Name did not serve to distinguish the Disputed Domain Name from the GrabTaxi Trade Marks.
Moving on to the second requirement, the Panel noted that all the evidence put forward by the Complainant, for instance, the use of promotional images belonging to the Complainant, the GrabTaxi Logo and reproduction of entire text from the Complainant’s website on the website linked to the Disputed Domain Name showed the Respondent’s lack of legitimate rights and interests in the Disputed Domain Name. The Panel was also convinced that the Respondent had knowledge of the Complainant’s operations in Southeast Asia and its GrabTaxi Trade Marks and knowingly chose to register the Disputed Domain Name with the intention of impersonating and/ or causing confusion to the general public to ride on the goodwill and reputation of the Complainant for commercial gain. In the absence of any explanations and justifications put forward by the Respondent, the Panel found that there was no evidence to demonstrate that the Respondent had rights or legitimate interests in respect of the Disputed Domain Name and the second element was established.
As to the final element, the Panel found that the Complainant had provided sufficient evidence to establish the Respondent’s registration and use of the Disputed Domain Name in bad faith. The Respondent was shown to be intentionally attempting to attract and divert internet users to its website for commercial gain which fell within bad faith contemplated in Paragraph 4(b)(iv) of the UDRP Policy. On the other hand, the Panel found that the Respondent’s purported “change” of the Disputed Domain Name to “community” after being served with notice of dispute did not negate bad faith. Moreover, the Panel found the Respondent’s act of masking itself by a privacy service after it was contacted by the Complainant was an attempt to avert transferring the Disputed Domain Name and a form of “cyberflight”, which fell within the well-established principle that “cyberflight” was a conduct that constituted bad faith.
The Complainant was successful in establishing all three elements. The Panel ordered the transfer of the Disputed Domain Name.
Implications
In general, a top-level suffix in a domain name, e.g. .COM, is traditionally disregarded under the confusing similarity rule. However, this case illustrates the fact that in appropriate cases where the applicable top-level suffix (for example in this case, .TAXI) relates to or is suggestive of the Complainant’s relevant trade mark, the Panel will not hesitate to take the top-level suffix into account. Given the increasing popularity of new gTLDs which themselves very often carry their own meanings, we expect that panellists will increasingly consider the top-level suffix when assessing confusing similarity and bad faith.
First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.
