DECISION

 

Tesla Inc. v. Paul Raptis / TESLA WARSZAWA SPOLKA Z OGRANICZONA ODPOWIEDZIALNOSCIA

Claim Number: FA2402002085126

PARTIES

Complainant is Tesla Inc. ("Complainant"), represented by Sarah Alberstein of ArentFox Schiff LLP, District of Columbia, USA. Respondent is Paul Raptis / TESLA WARSZAWA SPOLKA Z OGRANICZONA ODPOWIEDZIALNOSCIA ("Respondent"), Poland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tesla-budapest.com>, (the "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.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 22, 2024; Forum received payment on February 22, 2024.

 

On February 23, 2024, Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA confirmed by e-mail to Forum that the <tesla-budapest.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 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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-budapest.com. Also on February 23, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 15, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant is the owner of the mark TESLA registered, inter alia, in the USA for vehicles and their parts with first use recorded as 2006.

 

The Domain Name registered in 2023 is confusingly similar to the Complainant's trade mark adding the descriptive geographical term 'Budapest', a hyphen, and the gTLD .com none of which prevents said confusing similarity.

 

The Respondent does not have rights or a legitimate interest in the Domain Name, is not commonly known by it and has not been authorised by the Complainant.

 

The Domain Name has been used for a site mirroring the official site of the Complainant using the Complainant's TESLA Mark in its logo form in the masthead. This is impersonation for dubious purposes and does not constitute a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in opportunistic bad faith confusing Internet users for commercial gain.

 

There is a small disclaimer at the bottom of the site which is not effective to dispel confusion.

 

The Respondent has registered at least two other domain names containing the Complainant's mark and has been the subject of an adverse decision under the UDRP for registering a domain name containing the Complainant's mark for similar use to the Respondent's site in this case showing a pattern of bad faith activity.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the mark TESLA registered, inter alia, in the USA for vehicles and their parts with first use recorded as 2006.

 

The Domain Name registered in 2023 has been used for a site mirroring the official site of the Complainant using the Complainant's TESLA Mark in its logo form in the masthead. There is a small disclaimer at the bottom of the site.

 

The Respondent has registered at least two other domain names containing the Complainant's mark and has been the subject of an adverse decision under the UDRP for registering a domain name containing the Complainant's mark for similar use to the Respondent's site in this case.

 

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

The Domain Name consists of the Complainant's mark (which is registered, inter alia, in the USA for vehicles and their parts with first use recorded as 2006), a hyphen, the generic geographical term 'Budapest' and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term 'Budapest' does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.

 

The addition of a hyphen to a mark does not distinguish the disputed domain name from the mark incorporated therein per Policy 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) ("Respondent's <workforce-now.com> domain name appropriates the dominant portion of Complainant's ADP WORKFORCE NOW mark and adds a hyphen and the gTLD ".com." These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.").

 

The addition of the gTLD .com does not serve to distinguish a domain name from a complainant's mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to a registered mark in which the Complainant has rights.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. Although TESLA appears on the WhoIs details the Domain Name was not registered until 2023 and there is no corroborating evidence to show that the Respondent is commonly known by the Domain Name. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as "Jessie McKoy / Ripple Reserve Fund" in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).

 

It is clear from the evidence that the Respondent has used the site attached to the Domain Name to offer services relating to vehicles which are not connected with the Complainant. The usage of the Complainant's well known TESLA mark in its logo form as a masthead in relation to similar services not connected with the Complainant is not fair as the site concerned does not make it clear that there is no commercial connection with the Complainant and, in particular, copying material from the Complainant's web site is confusing. A small one line disclaimer at the bottom of the site is unlikely to be noticed or dispel confusion. As such this use cannot amount to the bona fide offering of services or a non commercial legitimate or fair use. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.) See Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant's well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).

 

The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the Panelist, the use made of the Domain Name in relation to the Respondent's site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant's mark in its logo form as a masthead and copies material from the Complainant's web site to offer services relating to vehicles which are not connected with the Complainant.  The copying of material from the Complainant's site and use of the Complainant's logo shows actual knowledge of the Complainant and its rights, business and services. The use of a small disclaimer at the bottom of the site will not dispel said confusion.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. 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.") See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006)(finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).

 

The Respondent is also engaging in a pattern of bad faith activity against a competitor. See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of a plurality Complainant's domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014) (finding that the respondent's adverse UDRP history was evidence of bad faith registration and use under Policy ¶ 4(b)(ii)).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(ii), (iii) and (iv).

 

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-budapest.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: March 18, 2024