DECISION

 

Tesla, Inc. v. Giovanni Giordano

Claim Number: FA2509002179686

 

PARTIES

Complainant is Tesla, Inc. ("Complainant"), represented by Chad Jalandoni of ArentFox Schiff LLP, District of Columbia, USA. Respondent is Giovanni Giordano ("Respondent"), Missouri, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <robotic-tesla.com> ("Domain Name"), registered with NICENIC INTERNATIONAL GROUP CO., LIMITED.

 

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 September 29, 2025; Forum received payment on September 29, 2025.

 

On October 3, 2025, NICENIC INTERNATIONAL GROUP CO., LIMITED confirmed by e-mail to Forum that the <robotic-tesla.com> domain name is registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and that Respondent is the current registrant of the name. NICENIC INTERNATIONAL GROUP CO., LIMITED has verified that Respondent is bound by the NICENIC INTERNATIONAL GROUP CO., LIMITED 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 October 7, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2025 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@robotic-tesla.com. Also on October 7, 2025, 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 October 28, 2025, 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.

 

PARTIES' CONTENTIONS

A. Complainant

Since 2003 Complainant has been involved in the design and sale of vehicles, batteries, solar goods and related products under the TESLA brand.  Complainant has rights in the TESLA mark through its registration of the mark in numerous jurisdictions including with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,554,429, registered on June 24, 2014).  The <robotic-tesla.com> domain name is identical to Complainant's mark as it fully incorporates the TESLA mark, merely adding a hyphen and the generic term "robotic" along with the ".com" generic top-level domain ("gTLD").

 

Respondent has no legitimate interests in the <robotic-tesla.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent any rights in the TESLA mark. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead, used the Domain Name to pass off as Complainant. Additionally, the Domain Name is currently inactive.

 

Respondent registered and uses the <robotic-tesla.com> domain name in bad faith. Respondent has attempted to pass off as Complainant. The Domain Name resolves to an inactive webpage. Respondent registered the Domain Name with actual knowledge of Complainant's rights in the TESLA mark given Complainant's reputation and the use of the Domain Name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

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 use of 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 through its registration with the USPTO (e.g., Reg. No. 4,554,429, registered on June 24, 2014). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that the <robotic-tesla.com> domain name is confusingly similar to Complainant's TESLA mark as it wholly incorporates the TESLA mark and adds the generic term "robotic-", along with the ".com" gTLD. Under Policy ¶ 4(a)(i), adding a generic term or terms, along with a hyphen and a gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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 Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) ("The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis."); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.").

 

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 lists "Giovanni Giordano" as 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).

 

The manner in which the Complaint is prepared presents the Panel with some difficulty in assessing the manner in which the Domain Name has been used. The Domain Name is inactive, and there is no other evidence of any intention to use the Domain Name for any purpose, be it a bona fide offering or legitimate non-commercial use.  Complainant asserts that the Domain Name "was used in connection with a commercial website that mirrored Complainant's official website at www.tesla.com and prominently displayed Complainant's TESLA Marks (among other of Complainant's intellectual property, including its proprietary photographs) in the purported sale of Complainant's products to the public. The content has been since removed as a result of Complainant's takedown efforts." However, the Complaint provides no documentary evidence of the above, such as a screenshot of the content of the previous website. The Panel considers it highly unlikely that a legally represented party would commence and succeed in such a takedown effort without obtaining a screenshot of the relevant website and there is no explanation for the absence of such information (or even evidence that the Complainant engaged in takedown efforts).

 

Noting the absence of a response the Panel is entitled to accept all reasonable allegations set forth in a complaint. On the balance of probabilities the Panel accepts the Complainant's unsupported assertions and considers such Respondent activity amounts to a deliberate attempt to pass off as the Complainant which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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).

 

However, even if the Panel does not accept the Complainant's assertions this does not provide the Respondent with rights or legitimate interests. The documentary evidence before the Panel indicates that the Domain Name is being held inactively. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) ("Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).").

 

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, August 26, 2025, Respondent had actual knowledge of Complainant's TESLA mark.  The Complainant has offered vehicles, batteries, solar goods and related products under the TESLA mark since 2003 and has developed a reputation in the mark. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that incorporates the TESLA mark and the term "robotic" (noting that Complainant has a reputation in the field of robotics) 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).

 

On the balance of probabilities the Panel finds that the prior use of the Domain Name for a site mirroring the Complainant's official site and reproducing Complainant's marks and intellectual property evidences 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.  Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv).  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.").

 

However, even if the Panel did not accept the Complainant's assertions the Respondent's actions amount to registration and use of the Domain Name in bad faith. It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that a Panel may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a "[r]espondent's passive holding amounts to bad faith."); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) ("Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.").

 

Based solely on the documentary evidence before it, the Panel would find that Respondent has, without alternative explanation (or active use), registered a domain name that is confusingly similar to the TESLA mark and failed to actively use the Domain Name. The nature of the Domain Name itself, including the term "robotic" (noting that Complainant has a reputation in the field of robotics) also indicates a likely intention to use the Domain Name to pass off as Complainant in some form. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the nature of the TESLA mark and the Domain Name) and in the absence of any Response or other explanation for such inactivity by Respondent (or any possible good faith use of the Domain Name by Respondent), the Panel would find on the balance of probabilities that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).

 

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 <robotic-tesla.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: October 28, 2025