DECISION

 

Tesla Inc. v. Paul Raptis / Euro Rent & Finance Sp. z o.o.

Claim Number: FA2402002082399

 

PARTIES

Complainant is Tesla Inc. ("Complainant"), represented by Sarah Alberstein of ArentFox Schiff LLP, District of Columbia, USA. Respondent is Paul Raptis / Euro Rent & Finance Sp. z o.o. ("Respondent"), Poland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tesla-gr.com> ("Domain Name"), registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 5, 2024; Forum received payment on February 5, 2024.

 

On February 6, 2024, Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA confirmed by e-mail to Forum that the <tesla-gr.com> domain name is registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA 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 February 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@tesla-gr.com. Also on February 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.

 

Having received no formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 27, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: CONCURRENT COURT PROCEEDINGS

On February 27, 2024, Respondent sent an e-mail to Forum which stated "We have filed a lawsuit against Tesla Inc. for the domain tesla-gr.com. I'm attaching the first page with the court stamp and the 5th page with the visible domains covered by the lawsuit."  The e-mail attached two pages, in Polish, which appeared on its face, noting the Panel does not speak Polish, to be a legal complaint from the Respondent against the Complainant, concerning amongst other things, the Domain Name. No other details about the nature of the court proceeding, what remedies Respondent is seeking, or how it should impact the progress of this proceeding were provided.

 

Section 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") addresses the issue of the relationship between the UDRP and court proceedings and notes that: 

 

"By design, the UDRP system preserves parties' court options before, during, and after a UDRP proceeding; as indicated by UDRP paragraph 4(k), the UDRP does not bar either party from seeking judicial recourse.

 

Paragraph 18(a) of the UDRP Rules gives the panel discretion to suspend, terminate, or continue a UDRP proceeding where the disputed domain name is also the subject of other pending legal proceedings.

…

Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding.

 

Where there are prior or pending court or administrative (e.g., trademark office) proceedings, it is within the panel's discretion to determine the relevance to ascribe to such proceeding in the UDRP context, in light of the case circumstances."

 

In the present case the Panel has been provided what is said to be two non-consecutive pages of a legal complaint, in Polish and untranslated, that are said to amount to the commencement of legal proceedings between the parties in a court, presumably in Poland. The Panel has no basis to determine the veracity of such documents, the extent they impact on the present proceeding (other than that they mention the Domain Name) or even if they have been appropriately filed in a court of competent jurisdiction. In any event their does not appear to be any court orders made that presently impact on the proceeding.

 

Noting the lack of clarity of the nature of the court proceeding, the fact that the Respondent has not asked for a suspension or termination of the proceeding due to the court proceeding, and the protections inherent in Policy 4(k) preventing a transfer when there is a pending court proceeding, the Panel exercises its discretion under Paragraph 18(a) to continue the present proceedings.

 

In view of the above, the Panel prefers to proceed to a decision.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a United States company that is well-known for offering a variety of electric vehicles and related accessories, having traded under its name since as early as 2003.  Complainant claims rights in the TESLA mark through registration in numerous jurisdictions including with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,554,429 registered June 24, 2014).  The domain name <tesla-gr.com> is confusingly similar because it wholly incorporates Complainant's mark, differing through the addition of the geographical abbreviation "-gr" (short for Greece) and the ".com" generic top-level domain ("gTLD").

        

Respondent lacks rights or legitimate interests in the <tesla-gr.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the TESLA mark in any way. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent has used the Domain Name to pass off as Complainant by resolving to a Greek-language website (the "Respondent's Website") that reproduces Complainant's name, logo and copyrighted material from Complainant's official website and purports to offer unauthorized products in direct competition with Complainant.

 

Respondent registered and uses the Domain Name in bad faith. Respondent attempts to attract users for commercial gain as Respondent uses the Domain Name to resolve to the Respondent's Website where it passes off as Complainant while offering to sell unauthorized products.  Respondent had actual notice of Complainant's rights in the TESLA mark, evidenced by the use of material from the Complainant's official website on the Respondent's Website.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.  On February 27, 2024, Respondent sent an e-mail to Forum detailing the concurrent court proceedings discussed above, but the e-mail did not otherwise address any aspect of the Complaint.

 

FINDINGS

Complainant holds trademark rights for the TESLA mark.  The Domain Name is confusingly similar to Complainant's TESLA mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in the TESLA mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 4,554,429 registered June 24, 2014). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the Domain Name is confusingly similar to the TESLA mark as it incorporates the entire TESLA mark while adding the geographical abbreviation "-gr" (an abbreviation for Greece) and the ".com" gTLD. Domain names which incorporate an entire mark are usually considered confusingly similar, while adding a geographical term and a gTLD is generally insufficient to create a distinction between a complainant's mark and a disputed domain name under Policy ¶ 4(a)(i).  See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as "the 'usa' portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds."); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the TESLA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS information of record lists "Paul Raptis / Euro Rent & Finance Sp. z o.o." as the registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

At the time of the Complaint the Domain Name resolved to the Respondent's Website which, through the reproduction of the TESLA mark, Complainant's logo and copyrighted material from of Complainant's official website, passes itself off as an official website of the Complainant for the purpose of offering for sale unauthorized versions of Complainant's goods (including material that reproduced Complainant's mark but was clearly not produced by Complainant), in direct competition with Complainant's merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized or counterfeit versions of a complainant's goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) ("The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests."). See also Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name (February 24, 2023), Respondent had actual knowledge of Complainant's TESLA mark since the Respondent's Website passes itself off as an official website of the Complainant including reproducing the copyrighted material from Complainant's official website. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the TESLA mark and use it to redirect visitors to a website selling goods in direct competition with the Complainant under the TESLA mark other than to take advantage of Complainant's reputation in the TESLA mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's TESLA mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that copies from Complainant's website and offers unauthorized versions of Complainant's products in direct competition with the Complainant's products.  Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tesla-gr.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: February 27, 2024