The Polish registrant of Teslashop.com picked it on the drop in 2020. Tesla Inc. filed a UDRP to get the domain, citing the established use of its TESLA mark as early as in 2005.
The Respondent made an interesting argument:
Respondent also contends that the disputed domain name was registered in 2006, which predates the earliest registration date of the TESLA mark, which, according to Respondent, occurred in 2013. Respondent maintains that between 2006 and 2013, Complainant operated under the name TESLA MOTORS, rebranding to TESLA in 2019. “Given this timeline, it is evident that Complainant’s complaint should be viewed as an attempt at hostile takeover by a larger entity leveraging its market dominance. The delayed assertion of trademark rights against a domain registered and used well in advance raises concerns about the legitimacy of Complainant’s claims.”
In other words, the Complainant mark’s change from TESLA MOTORS to TESLA indicates the domain was registered and dropped by various registrants in the past, without infringing on the TESLA mark every time. However, the domain’s registration in this case exists as of 2020, to which the Forum panel agreed; the Complainant did have its rights infringed by the Respondent.
The Respondent won the case as their claims that they are providing a service of Tesla parts for Tesla enthusiasts is legitimate use of the domain as it passed to Oki Test. The Panel agreed, ordering the domain Teslashop.com to remain with the Respondent.
The domain transfer was denied.
Copyright © 2024 DomainGang.com · All Rights Reserved.Tesla Inc. v. Korneliusz Wieteska / Zakupomania.pl Sp. z o.o.
Claim Number: FA2405002096260
PARTIES
Complainant is Tesla Inc. (“Complainant”), represented by Sarah Alberstein of ArentFox Schiff LLP, District of Colunbia, USA. Respondent is Korneliusz Wieteska / Zakupomania.pl Sp. z o.o. (“Respondent”), represented by Rafał Sikora, of SikoraLegal Rafał Sikora, Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is teslashop.com, registered with Tucows Domains Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jeffrey M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on May 3, 2024; Forum received payment on May 3, 2024.
On May 6, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the teslashop.com domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2024, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@teslashop.com. Also on May 6, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.
A timely Response was received and determined to be complete on May 28, 2024.
On May 29, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey M. Samuels as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Tesla Inc. owns the trademark TESLA, which it has used since 2003 on a variety of vehicles, energy, battery and solar goods and services, battery and vehicle accessories, toys, clothing, and related lifestyle goods.
Complainant owns numerous trademark registrations in the United States and around the world for the TESLA trademark. These registrations include European Union Registration Nos. 016198061 (TESLA) and 014456917 (TESLA) and United States Registration Nos. 4554429 (TESLA), 4443472 (TESLA), and 4226099 (TESLA).
Complainant also owns the domain tesla.com and operates an online webstore on a subpage of its website located at shoptesla.com.
According to the Amended Complaint, the disputed domain name, teslashop.com, was registered by Respondent on October 20, 2020. The disputed domain name allegedly resolves to a commercial website that prominently displays Complainant’s TESLA mark, alongside images of Complainant’s vehicles, and purports to sell to the public Complainant’s products and/or products intended to be used in connection with Complainant’s products. Complainant further asserts that Respondent also uses the website at the disputed domain name to lure consumers into providing monetary payments and personally identifying information through a third-party website.
Complainant contends that the disputed domain name is identical or confusingly similar to the TESLA trademark. It notes that the disputed domain name wholly incorporates the TESLA mark and that the inclusion of the terms “shop” and “.com” do not distinguish the domain name from Complainant’s TESLA mark.
Complainant next maintains that Respondent has no rights or legitimate interests in the disputed domain name. Complainant explains that there is no evidence that Respondent owns any trademark that is related to the disputed domain name or that Respondent is commonly known by the business name “Tesla.” Complainant also indicates that Respondent is not now, and has never been, licensed or otherwise authorized by Complainant to use the TESLA mark or to register or use any domain name incorporating such mark.
To the extent Respondent could be considered a reseller, Complainant argues that Respondent is not entitled to rely on the so-called Oki defense (see Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903), insofar as the website in issue does not include a disclaimer of affiliation with Complainant.
With respect to the issue of “bad faith” registration and use, Complainant argues that the evidence establishes that Respondent is clearly trying to profit or otherwise obtain a benefit from the goodwill associated with the TESLA trademark by incorporating the mark in the disputed domain name and by using a website corresponding to the domain name to falsely and deceptively hold itself out as being Complainant or as having an affiliation with or connection with Complainant and the TESLA mark. “Respondent in this case is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s TESLA Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
Complainant also accuses Respondent of attempting to obtain bad faith commercial gain or other benefit by fraudulently impersonating Complainant by enticing potential investors and/or customers to furnish personally identifying and/or financial information to Respondent and/or enter business dealings with Respondent.
Asserting that “[r]egistration of a confusingly similar domain name with knowledge of another’s trademark is evidence of bad faith,” Complainant maintains that, given the fact that the TESLA mark is well-known and widely advertised in the U.S. and around the world and that Complainant has made extensive use of the mark on the Internet and in other media prior to registration of the disputed domain name, “[t]here is no doubt that Respondent had actual knowledge of Complainant’s rights in the TESLA Marks….” In this regard, Complainant notes that the disputed domain name wholly incorporates the TESLA mark; Respondent makes prominent use of the mark on its website, alongside images of Complainant’s vehicles; the disputed domain name closely imitates Complainant’s official website for its online shop located at shop.tesla.com; Respondent purports to sell TESLA goods without authorization from Complainant; Respondent holds itself out as having an affiliation with Complainant; and the disputed domain name was registered decades after Complainant’s TESLA mark was first used and registered.
B. Respondent
Respondent, in its Answer, paints a starkly different picture of the situation from that set forth in the Amended Complaint. Respondent indicates that the disputed domain name was registered solely for private noncommercial purposes, i.e., connecting with other electric car enthusiasts and sharing experiences with using electric cars, electromobility, and car parts. It points out that the photo used on the disputed website depicts a family trip.
Respondent points to European Union Regulation 2017/1001 on the European Union trademark as support for his contention that he has not engaged in trademark infringement. Article 14 of such regulation provides, in relevant part, that the owner of a EU trademark is not entitled to prohibit a third party from using the mark to indicate the intended purpose of goods or services, in particular as accessories or spare parts.
Respondent also contends that the disputed domain name was registered in 2006, which predates the earliest registration date of the TESLA mark, which, according to Respondent, occurred in 2013. Respondent maintains that between 2006 and 2013, Complainant operated under the name TESLA MOTORS, rebranding to TESLA in 2019. “Given this timeline, it is evident that Complainant’s complaint should be viewed as an attempt at hostile takeover by a larger entity leveraging its market dominance. The delayed assertion of trademark rights against a domain registered and used well in advance raises concerns about the legitimacy of Complainant’s claims.”
ADDITIONAL SUBMISSIONS
On May 31, 2024, the Panel entered Procedural Order No. 1 directing Respondent to present evidence in support of its assertion that the disputed domain name was registered in 2006. In response thereto, Respondent attached a WhoIs Record extract from November 14, 2007, showing that the disputed domain name was first registered on August 3, 2006. Respondent concedes, however, that the registration for the disputed domain name was dropped and re-registered multiple times since 2006.
Complainant, pursuant to Procedural Order No. 2, filed a Reply to Respondent’s Response to Procedural Order No. 1. In its Reply, Complainant notes that the disputed domain name was registered in 2006 by a third party and that the ownership and use of the disputed domain name has not been continuous as it was dropped and re-registered multiple times in 2020. According to Complainant, “[t]he 2006 registration is mooted by these repeated expirations and re-registrations; only the operative October 20, 2020 registration date reflected in the current WhoIs records is relevant to the instant dispute.”
Moreover, Complainant adds, even if the disputed domain name was registered in 2006, its rights in the TESLA mark predate the registration date. Complainant reiterates that it adopted and first used the TESLA mark as early as 2003, and notes that it owns multiple registrations for the TESLA mark dating to 2005, including U.S. Trademark Registration Nos. 3403726 (TESLA MOTORS) and 3269364 (TESLA ROADSTER).
FINDINGS
The Panel finds that: (1) the disputed domain name is confusingly similar to the TELSA trademark and that Complainant has rights to such mark; and (2) Respondent has rights or legitimate interests in the disputed domain name.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the TESLA mark. The domain name incorporates in full the TESLA mark, adding only descriptive or generic terms. Such changes do not avoid a finding of confusing similarity. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312; Siemens Aktiengesellschaft v. Telmex Management Services Inc., WIPO Case No. D2003-0995; Koninklijke Philips Electronics N.V. v. NicNax, WIPO Case No. 2001-1245; Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No.D2000-1487; DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No.D2001-0160; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman, WIPO Case No. D2000-1375.
The evidence further establishes that Complainant has rights in the mark, as evidenced by its ownership of national and regional trademark registrations and its longstanding use of the TESLA mark.
Rights or Legitimate Interests
The key issue raised in this matter is whether Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.
Annex E to the Amended Complaint includes the website associated with the disputed domain name, in both the original Polish language and as translated by Google into English. The website invites the public to become a telsashop.com partner and indicates that “Together we will deliver parts and accessories for these great electrics around the world.” The website, after extoling the virtues of TESLA cars, goes on to state, “But let’s not pretend. We also know the problems of users of these beautiful cars – including the extremely expensive parts. This is where our business was born. The teslashop.com platform is a place where every Tesla driver will find parts and accessories for their machine. Regardless of what part of the world he lives in. Don’t waste your chance!” The website then invites the public “to propose cooperation with us or offer products or services and to contact us?”
It appears to the Panel that Respondent, through its teslashop.com website, is providing a platform through which drivers of TESLA cars can obtain parts and accessories for their cars.
While the decision in Oki, referred to in the Amended Complaint, is not directly on point (as stated by the Oki panel, “[t]his case raises the difficult question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name” (italics added)), the Panel finds the test set forth in Oki relevant to the instant dispute. (See, e.g., Dr. Ing. H.c.F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, where the panel applied Oki where respondent used, without authorization, the disputed domain name porsche-buy-com in connection with a website that offers Porsche goods and services.)
Under Oki, to be “bona fide,” the offerings at the disputed website must meet several requirements. These include the following:
1. Respondent must actually be offering the goods or services in issue;
2. Respondent must use the site to sell only the trademarked goods;
3. The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and
4. Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
As noted above, Complainant asserts that Respondent cannot rely on the so-called Oki defense because the disputed website does not include a disclaimer of affiliation with Complainant. Complainant does not assert, and the evidence does not support a determination, that the other Oki factors are not satisfied.
It is certainly true that the disputed website does not, in the words of Oki, “accurately disclose the registrant’s relationship with the trademark owner.” It does not, for example, include a disclaimer of affiliation. However, in the opinion of the Panel, a fair and reasonable reading of the website would not, again in the words of Oki, “falsely suggest” that Respondent is the trademark owner or that the website is the official site. Rather, the website’s discussion of the problems experienced by owners of TESLA cars, in particular the extremely expensive parts, and Respondent’s stated desire to address this problem by creating a business to provide a platform “where every Tesla driver will find parts and accessories for their machine” would not necessarily lead one to conclude that the site is run by or authorized by Complainant. The overall tenor of the website could reasonably lead one to conclude that the site is run by the owner of a TESLA who is merely seeking to communicate with other TESLA owners regarding not only the benefits of ownership, but the problems associated with the cost of parts and accessories. While the disputed website includes a photo of a TESLA vehicle, the vehicle’s license plate supports Respondent’s assertion that the photo on the website depicts a family trip.1
In sum, bearing in mind that Complainant bears the burden of proof on all elements of the Policy, the Panel concludes that Respondent has rights or legitimate interests in the disputed domain name.2 While the disputed site does not explicitly disclose Respondent’s relationship with Complainant, it does not falsely suggest such a relationship.
Registration and Use in Bad Faith
In view of the Panel’s finding on the issue of rights or legitimate interests, it is not necessary for the Panel to reach this element of the Policy.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the teslashop.com domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: June 12, 2024
