‘grabprinting.com' Decision: UDRP Panels Will Want Snapshot Of Circumstances At Time When Domain Name Was Registered

Author:Ms Jane Seager and Marie Choveton-Caillat
Profession:Hogan Lovells
 
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Grabtaxi, the owner of numerous trademarks containing the term 'grab', sought the transfer of 'grabprinting.com' under the UDRP The panel found that the respondent appeared to have been operating a legitimate business for around three years The respondent had also provided a credible explanation for its adoption of the domain name in good faith In Grabtaxi Holdings Pte Ltd v Lim (WIPO Case D2019-1585), a single-member panel has denied the transfer of a domain name under the Uniform Domain Name Dispute Resolution Policy (UDRP) because the complainant had failed to prove the respondent's lack of rights or legitimate interests. The panel found that the respondent appeared to have been operating a legitimate business for around three years and had provided a credible explanation for his choice of the domain name.

Background

The complainant was Grabtaxi Holdings Pte Ltd, a technology company based in Singapore offering a software platform and mobile application for ride hailing, ride sharing, food delivery, logistics services and digital payment. The respondent was Sam Lim, the sole proprietor of an online printing company in Singapore. The domain name 'grabprinting.com' was registered in August 2015.

UDRP requirements

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under Paragraph 4(a):

the disputed domain name is identical, or confusingly similar, to a name, trademark or service mark in which the complainant has rights; the respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and subsequently used in bad faith. Decision

Identity/similarity

As far as the first limb was concerned, the complainant claimed that the domain name was identical to its trademarks both pre-dating and post-dating the registration date of the domain name. Such trademarks were considered by the complainant as a family of trademarks that used the term 'grab', either alone or as a prefix. The complainant considered that the other terms added were intended to be descriptive. Accordingto the complainant, the domain name reproduced the same pattern as it used the term 'grab' followed by the suffix 'printing'.

The panel found that the domain name was confusingly similar to the trademarks in which the complainant had rights.

Rights/legitimate interests

With regard to the second limb, the complainant argued that the respondent was not commonly...

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