DECISION

 

Tesla Inc. v. bigot thomas

Claim Number: FA2403002087524

PARTIES

Complainant is Tesla Inc. ("Complainant"), represented by Sarah Alberstein of ArentFox Schiff LLP, District of Columbia, USA. Respondent is bigot thomas ("Respondent"), France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <teslaparkeco.com>, registered with NameCheap, Inc..

 

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.

 

Héctor Ariel Manoff as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 7, 2024; Forum received payment on March 7, 2024.

 

On March 8, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <teslaparkeco.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@teslaparkeco.com. Also on March 12, 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 April 2, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Héctor Ariel Manoff 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

1- Tesla Inc. owns trademark TESLA in the United States and other countries around the world.

2- Complainant's TESLA trademark has been used continuously since 2003 in connection with goods that include vehicles, battery and solar goods, toys and lifestyle goods.

3- Complainant has invested substantial sums of money in developing and marketing the TESLA Marks and the products and services offered under those marks.

4- Complainant is well-known globally.

5- Complainant owns the domain <tesla.com>, in which its trademark and products and services are advertised and promoted.

6- Complainant has also an online webstore on a subpage of its website located at the www.shop.tesla.com.

7- Respondent registered and began using the Disputed Domain Name in bad faith on January 29, 2024, decades after Complainant adopted and first used and registered TESLA marks.

8- Respondent has registered and is using the domain name <teslaparkeco.com> in bad faith, in an unlawful effort to confuse and take commercial advantage of the public.

9- The Disputed Domain Name comprises Complainant's TESLA Mark in its entirety by adding two generic terms (park and eco).

10- Respondent's website at the Disputed Domain Name mirrors the content of Complainant's www.tesla.com website.

11- Respondent's website is very likely to confuse and mislead consumers into believing falsely that Respondent is Complainant and that the products and services are affiliated with, or sponsored or endorsed by, Complainant.

12- There is no evidence that Respondent owns any trademark or service mark rights or registrations that are identical, similar, or in any way related to the Disputed Domain Name <teslaparkeco.com>.

13- Respondent has never been, licensed or authorized by Complainant to use any of Complainant's TESLA Marks.

14- Respondent has no rights or legitimate interests to the Disputed Domain Name. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Tesla Inc. owns all right, title, and interest in and to the trademark TESLA and has used and registered it in the United States and worldwide since 2003 in connection with goods that include vehicles, battery and solar goods, toys and lifestyle goods. Respondent has registered <teslaparkeco.com> domain name in January 2024 and is using it 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 owns trademark registrations for TESLA marks in the United States and other countries around the world in connection with goods that include vehicles, battery and solar goods, toys and lifestyle goods since 2003. (Annex A).

 

Complainant also owns a website www.tesla.com, in which its trademark and products and services are advertised and promoted, along with an online webstore on a subpage of its website located at the www.shop.tesla.com.

 

The Disputed Domain Name incorporates Complainant's TESLA mark and two generic terms (park and eco). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable 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").

 

This Panel finds that Complainant has proved trademark rights on TESLA and the disputed domain name is confusingly similar to that trademark.

 

The Panel finds that the domain name is almost identical and confusingly similar to Complainant marks under Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

The Panel finds that Respondent has no rights or legitimate interests in the <teslaparkeco.com> domain name because Tesla Inc. has not authorized Respondent to use the TESLA mark. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

Respondent does not have any trademark rights in the <teslaparkeco.com> domain name and according to Annex D Respondent is not named or commonly known by the business name, Tesla.

 

Thus, this Panel concludes that Respondent does not appear to be commonly known by the <teslaparkeco.com> domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name).

 

The evidence submitted by Complainant shows that Respondent's use of the <teslaparkeco.com> domain is not a bona fide offering of goods. (Annex E). Respondent's website at the Disputed Domain Name mirrors the content of Complainant's www.tesla.com website.

 

This Panel finds that the purpose of the Disputed Domain Name is to try to show that the Disputed Domain Name is associated with Complainant and that Respondent is not using the domain names in connection with a legitimate noncommercial use or fair use under Policy 4(c)(iii).

 

Therefore, the Panel agrees that Respondent is not commonly known by the disputed domain name does not have legitimate interest under Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

This Panel finds that Complainant has proved that Respondent registered the disputed domain name several years after Complainant's first use and registration of the trademark TESLA.

 

The <teslaparkeco.com> domain name includes Complainant's trademark with the addition of generic terms.

 

Respondent's website includes Complainant's trademarks, products and images (Annex E) which is a proof of bad faith and consumers can be led into confusion about the origin of the goods. Respondent is trying to pass off the domain names as Complainant's website. See Nautica Apparel, Inc. v. Web Commerce Communications Limited / Client Care - Claim Number: FA2402002084211 (On the resolving website, Respondent uses the NAUTICA trademarks and images of products bearing NAUTICA trademarks. Respondent has no reason to use the NAUTICA trademarks in the domain names or on the associated website other than to attract internet users to its site for commercial gain. Thus, Respondent is intentionally trying to create a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement.) 

 

Complainant proved that Respondent has attempted to obtain bad faith commercial gain or other benefit by fraudulently impersonating Complainant to entice potential investors and/or customers. (Annexes E and F).

 

In addition this Panel agrees with Complainant that TESLA marks are well-known so it is proved that Respondent had actual knowledge of Complainant's rights in the TESLA marks.

 

The Panel determines that Respondent registered and used the disputed domain name in bad faith under 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 <teslaparkeco.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Héctor Ariel Manoff, Panelist

Dated: April 5, 2024