Shearn Delamore & Co Legal Alerts and Updates

In evaluating whether a disputed domain name is identical or confusingly similar to a complainant’s trademark, the consensus among Uniform Dispute-Resolution Policy panels, including MYNIC's Domain Name Dispute Resolution Policy panel, is to disregard the gTLD ("generic top-level domains") ".com".

It has been held that such negligible variations are inconsequential when determining whether a domain name is identical or confusingly similar to the trademark. However, a relatively recent decision involving the disputed domain name <grab.taxi> demonstrates that the plethora of new gTLDs (“ngTLDs”) are changing the landscape of gTLDs, especially now that more disputes involve TLDs other than <.com>.

Facts

One of the domain name dispute cases filed at the Kuala Lumpur office of the Asian Domain Name Dispute Resolution Centre involved the domain name <grab.taxi> (“disputed domain name”) registered by an individual, Hoong Ann Lim (“Hoong”) on 18 August 2015. The complainant was GrabTaxi Holdings Pte Ltd, a company which was part of the GrabTaxi Group (“GrabTaxi”). GrabTaxi was the registered and common law owner of the trademarks GRABTAXI”, “GRAB TAXI” and "

" (“GrabTaxi Trade Marks”) in various jurisdictions, namely, Singapore, China, Vietnam and Malaysia. GrabTaxi's goods and services related to its user friendly mobile taxi booking application launched in 2012.

Grabtaxi’s arguments

Grabtaxi contended that the disputed domain name <grab.taxi> was identical or nearly identical to the GrabTaxi Trade Marks. Further, the top-level suffix <taxi> in the disputed domain name formed part of the GrabTaxi Trade Marks. GrabTaxi stated that, although a top-level suffix in a domain name was traditionally disregarded under the confusing similarity rule, the applicable top-level suffix must be considered in its entirety as it formed part of the relevant trade mark hence satisfying the threshold of the “confusing similarity” test, when making comparisons between the trade mark and the domain name.

Further, GrabTaxi alleged that <.taxi> had a meaning beyond a mere functional identifier on the Internet, and to disregard it would ignore the commercial reality that it added distinctive significance to <grab> as the second-level domain, the combination of which clearly directly correlated to the GrabTaxi Trade Marks and GrabTaxi’s goods and services.

The decision

The panel in the <grab.taxi> case incorporated the gTLD in assessing whether the disputed domain name was identical or confusingly similar to the GrabTaxi Trade Marks. The panel held that the top-level domain could play a part in creating confusion in cases where the top-level domain added significance, or related to the product and services of GrabTaxi’s trade mark. The Panel also held that the “<.>” between the words “grab” and “taxi” did not serve to distinguish the disputed domain name from the GrabTaxi Trade Marks.

Further, the panel noted that Hoong's statement "For your advertising needs contact info [at]grab[dot]taxi”’, which was shown prominently at the top of its website, showed Hoong’s intent to gain advertising revenue by riding on the goodwill and reputation of the GrabTaxi Trade Marks.

The panel also noted that all the evidence put forward by GrabTaxi, for instance, the use of promotional images belonging to the GrabTaxi, the GrabTaxi Logo, GrabTaxi signature colours and reproduction of entire text from GrabTaxi’s website on the website at the disputed domain name showed Hoong’s lack of legitimate rights and interests. The panel was convinced that Hoong:

“had knowledge of the Complainant operations in the Southeast Asia countries including Malaysia and 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 Hoong to GrabTaxi’s contentions, the panel found that there was no evidence to demonstrate that Hoong had rights or legitimate interests in respect of the disputed domain name.

The Panel found that GrabTaxi had provided sufficient evidence to establish that the Hoong’s registration and use of the disputed domain name was in bad faith, by intentionally attempting to attract and divert internet users to its website for commercial gain. Finally, the panel found that Hoong’s conduct in masking itself by a privacy service constituted bad faith.

GrabTaxi was thus successful in its complaint and the disputed domain name was transferred to them.

Implication

This decision emphasises the need to monitor online brand hijacking especially now that many new gTLDs have been launched, some of which may form part of the trademark. Typically, a new gTLD is used to describe the core business offered under the mark in the second level domain. Cases such as <grab.taxi> demonstrate that the gTLD "itself can be an important factor in finding confusing similarity under the UDRP".

Conclusion

It is important to have a domain name strategy, given the increasing popularity of new gTLDs which themselves very often carry their own meanings. Moving forward, trademark owners should register core brands with the relevant Trade Mark Offices. Trade Mark owners should also consider registering their core brands as second TLDs under ngTLDs that best describe the nature of their goods or services and in The Internet Corporation for Assigned Names and Numbers' Trademark Clearinghouse ("TMCH") database.

The registration of a trademark in the TMCH will provide notice to the domain name registrant that the registered domain name includes a federally registered trademark of another. If the domain name registrant proceeds with the registration nevertheless, the TMCH will give notice to the trademark owner of the registration, which will then provide the trademark owner with an opportunity to take appropriate action.

Finally, trademark owners should also consider hiring services that will monitor ngTLDs for domain names that are confusingly similar to their trademarks.

For further information regarding intellectual property law matters, please contact

Karen Abraham
karen@shearndelamore.com

Indran Shanmuganathan
indran@shearndelamore.com

TAX & REVENUE

Income tax

The Income Tax (Deduction for Expenses in relation to National Greenhouse Gas Reporting Programme) Rules 2016 have been gazetted on 17 November 2016 and shall have effect from years of assessment 2015 to 2017.

Further, the Inland Revenue Board of Malaysia has recently issued two new public rulings on:

Industrial Buildings Part I (Public Ruling No 8/2016) — issued on 23 November 2016; and
Gratuity (Public Ruling No 9/2016) — issued on 23 November 2016.

GOODS AND SERVICES TAX (GST)

The revised versions of the following Specific Guides have been published on the Royal Malaysian Customs Department’s GST website:

Employee Benefits (revised as at 10 November 2016); and
Input Tax Credit (revised as at 23 November 2016).

For further information regarding tax and revenue law matters, please contact

Goh Ka Im
kgoh@shearndelamore.com

Anand Raj
anand@shearndelamore.com

Dear valued clients and business partners,