Recent Case Notes & Commentary

How Panels Determine a Right and Legitimate Interest in a Domain Name?

Grabtaxi Holdings Pte. Ltd. v. Sam Lim WIPO Case No. D2019-1585 September 2, 2019


How do panels go about finding if the respondent, who has registered a domain name, has a right to register it, is using it for a legitimate purpose or is just a cybersquatter? Especially, how do they do it when it looks as if the Respondent might be conducting a legitimate business, but it needs a closer examination than the Respondent’s say-so?


The case shows how a panel looks at all the detail it can get its hands on and decide whether or not it all mounts to a legitimate business and thus a right or legitimate interest in the disputed domain name.


THE CASE

The Complainant was a Singapore-based technology company that offered software and mobile applications for ride sharing, food delivery and logistics, among other activities. It held several trademark registrations for the marks GRAB, GRABTAXI, GRABASSIST, GRABBIKE and others which follow the same GRAB + noun format.


The Complainant's Logo

It had a series of GRAB trademarks, some by itself and some with descriptive words added, as in GRAB TAXI. So it was pretty easy for the panel to find that the domain name <grabprinting.com>, the Respondent’s domain name was confusingly similar to the trademarks as it consisted of GRAB and another descriptive word, “printing”.


WAS THERE AN RLI?

But the first big question was whether the use to which the Respondent actually put the domain name gave it a right or legitimate interest (an RLI) in the domain name. In particular, was the Respondent using the domain name to run a bona fide business before the dispute came to its notice. If ‘yes’, this would give the Respondent a complete defence to the claim against it.


The Domain Name had been registered on August 6, 2015 and had its own website offering printing services under the name <grabprinting.com> which was also registered as a business name a few months later.


The Respondent said that this showed a legitimate interest, as it ran a business that, as the panel said, looked genuine. The business was also not in conflict with the Complainant’s trademarks as it did not have a simple, single GRAB in its trademark stable at the time the disputed domain name was registered and in any event none of its trademarks at that time covered printing.


Was the business therefore bona fide? Yes, it was bona fide , especially since the word “grab” was in common usage, and was descriptive of the Respondent’s printing services, meaning taking hold of something quickly, like quick printing.


The Panel therefore gave what we think was a good balanced appraisal of the Respondent’s case; the business looked reasonable, it was legitimate, was not a flash in the pan, was not really intruding on the Complainant’s trademark rights and there was no evidence of the Respondent trying to mislead anyone. (Note to legal practitioners: you will be on strong ground if you can work evidence of any of these factors into your defence).


Let us go a little deeper into how the Panel found the Respondent had an RLI in the domain name.


With the Complainant being a former tech start-up, and having experienced recent and extreme levels of growth and expansion, this case ultimately hinged on the nature of the Complainant’s business and its trademarks when the disputed domain was registered, in late 2015.


The Complainant alleged that it had developed a “brand architecture” by which consumers would associate the word grab, in conjunction with a generic term, as being related to the Complainant’s business. In its view, the Respondent registered the domain name with the intention to take an unauthorised unfair advantage of this “brand architecture,” and as such it did not constitute a right or legitimate interest in the domain name.

Our reaction to this argument was that it might have been a bit overstated . The Panel seems to have agreed as it noted:


“The Complainant unfortunately has not addressed the fact that when the Domain Name was registered, it had not yet owned registered rights for GRAB on its own and it would appear that it had not yet extended its services outside of providing taxi and transportation services. This would therefore be prior to the establishment of its so-called “brand architecture”.”


The Respondent's Logo - The Panel noted that the difference between the parties logos indicated that it was unlikely the Respondent was not trying to imitate the Complainant

While it may have been true that the Respondent knew about the Complainant at the time of registering the domain, the Complainant was only a taxi service, and had nothing to do with the field in which the Respondent was operating, namely printing. This, in conjunction with the fact that “grab” has a widespread common usage, as mentioned above, was enough for the panel to accept that the Respondent had been using the domain name in connection with a legitimate business that did not fall clearly within the Complainant’s proven rights, and as such it was a bona fide offering of goods and services.


Once again: facts triumph over theories. Put the evidence in and you have a better chance of winning.


A BONUS ON RIGHTS AND LEGITIMATE INTERESTS-COMMONLY KNOWN

In addition, the panel also found that the Respondent, who had registered “Grabprinting” as its business name, was commonly known by the disputed domain name. Highlighting that Respondent’s services are easily found on a Google search, the panel found that the Respondent held a level of public awareness in association with the domain name, completely independent of the Complainant and its marks. It was therefore fair to conclude that the Respondent was commonly known by the domain name.


This ground cannot always be proved, and it might be for that reason that legal practitioners and others do not follow through and see if they can prove the point. But as we see from this case, sometimes the point can be established and the Respondent has it as another defence to rely on.


Consequently, in this case the Complaint failed, on two bases, on the second element (RLI), and the Complaint was denied.


From this decision as a whole, we can see that in determining a respondent’s potential right or legitimate interest in a domain name, panels may very well have to dig into the nuances of trademark laws, to see what trademarks the Complainant has, when it acquired them and what rights do they actually give. After all, the UDRP does function to protect the rights of trademark holders, and cases such as the present one emphasise the importance of critical, comprehensive and nuanced judgements, including on trademark issues when necessary.

See also our separate note on an interesting issue of evidence that arose in this case.