Claim Number: FA0508000547889
Complainant is Tesla Industries,
Inc. (“Complainant”), represented by Brian
A. Sullivan, Esquire of Werb and Sullivan, 300 Delaware Avenue, 13th Floor, PO
Box 25046, Wilmington, DE 19899.
Respondent is Stu Grossman d/b/a SG Consulting (“Respondent”), represented by John Berryhill, Esquire, 4
West Front Street, Media, PA 19063.
The domain name at issue is <tesla.com>,
registered with Gandi.
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
M. Kelly Tillery, Esquire, Panelist and Chair
Hon. Marilyn W. Carney (Ret.), Panelist
G. Gervaise Davis, III, Panelist
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 25, 2005; the National Arbitration Forum received a
hard copy of the Complaint on August 29, 2005.
On August 29, 2005, Gandi confirmed by e-mail to the National
Arbitration Forum that the <tesla.com>
domain name was created on November 4, 1992 and is registered with Gandi and
that Respondent is the current Registrant of the name. Gandi has verified that Respondent is bound
by the Gandi Registration Agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 8, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 28, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@tesla.com by e-mail.
A timely Response was received and determined
to be complete on November 10, 2005.
A timely Additional Submission from Complainant was received and
determined to be complete on November 15, 2005.
On November 16, 2005, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist and Chair and Hon. Marilyn W. Carney
(Ret.) and G. Gervaise Davis, III, as Panelists.
An untimely Additional Submission was received from Respondent on November
21, 2005. An untimely responsive
Additional Submission was received from Complainant on November 28, 2005.
The Panel has decided to consider all Additional Submissions of the
Parties, however tardy. NAF
Supplemental Rule 7.
Complainant requests that the domain name be transferred from
Respondent to Complainant.
A. Complainant makes the following
contentions:
1. it
is a manufacturer of portable electronic ground power units, which start and
provide power to the aircraft onboard systems and power conversion units for
use by the military;
2. it
has been in business since 1991 and its customers are primarily the U.S.
military;
3. it
uses the corporate name “Tesla Industries” and its email address is
<teslaind.com>;
4.
it owns the
Trademark “Tesla” (stylized)
registered with the U.S. Patent and Trademark Office on October 8, 1996 (Reg.
No. 2005764);
5.
it is known by
the name “Tesla” by all branches of the U.S. military, certain foreign
military, the U.S. Forestry Department, a number of police departments, and the
U.S. Department of Homeland Security;
6.
Respondent has
not registered for use, used, and never used for commerce, the domain name at
issue;
7.
it has
contacted Respondent in an attempt to cause Respondent to transfer the domain
name to it which Respondent has refused to do;
8.
Respondent
cannot demonstrate Respondent’s use of, or demonstrable preparations to use,
the domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services;
9.
Respondent has
not been commonly known by the domain name;
10.
Respondent is
not making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademarks and service marks of Complainant;
11.
there are
circumstances indicating that Respondent has registered or has acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to Complainant who is the owner of
the trademark or service mark for valuable consideration in excess of
Respondent’s documented out-of-pocket costs directly related to the domain
name;
12. Respondent
has not used the e-mail address, “tesla.com” since 1996 and has used it only
for personal reasons.
B.
Respondent makes the following contentions:
1.
it registered the domain name in November 1992, at a time when
the World Wide Web, and websites themselves, did not exist, domain names were
primarily used for email, gopher, ftp, telnet, and other services;
2.
it has used the domain name as an e-mail address for 13 years;
3.
Complainant’s U.S.P.T.O. Registration is merely for a stylized
mark:
4.
“tesla”, apart from any
stylization or graphical indication, is the standard SI unit of magnetic flux
density, thus a generic term;
5.
the “tesla” was named in honor Nikola Tesla, a prolific inventor
credited with, among other things, the invention of polyphase alternating
current generation and transmission equipment upon which the electric power
systems of the world have depended for nearly 100 years;
6.
<tesla.org> is the home of the Tesla Foundation of North
America;
7.
there exists U.S. TM Reg. No. 0936995 for the mark “TESLA”
(block letters) owned by Tesla, Ltd.
for “radio, welding, and sound recording equipment”;
8.
there are 14 other business entities chartered in
Delaware and named “Tesla” such as Tesla International Inc. formed in Delaware
in 1978, Tesla Centre for Advanced Technology Inc. formed in Delaware in 1989,
and Teslab Inc. formed in Delaware in 1985;
9.
many entities use the surname Tesla
for many purposes, and many of those purposes relate to electromagnetic
technology;
10.
Complainant has not shown that its rights extend to anything
other than its stylized logo;
11.
Respondent has used the domain name since November 1992, as a
personal email address long prior to Complainant’s Application
for Trademark Registration, and well prior to Complainant’s Trademark
Registration;
12.
Respondent has made no commercial use of the domain name for any
purpose remotely relating to Complainant’s goods and services;
13.
Complainant customers are primarily branches of the US military,
with whom Respondent has had no dealings whatsoever;
14.
there is no duty to use a domain name in connection with a
website in order to establish legitimate use of a domain name;
15.
Respondent is a computer network engineer who has provided no
consulting or other services relating to the type of electromagnetic equipment
produced by Complainant;
16.
his uses of the domain name to provide ftp (file transfer
protocol) service as well as inbound and outbound email service to such
addresses as root@tesla.com and grossman@tesla.com;
17.
the domain name has been in legitimate use for personal purposes
and for computer network consulting since registration of the domain name in
1992, using email and ftp services;
18.
Respondent been using the domain name for 13 years in good
faith, but Respondent has repeatedly been approached by a variety of parties,
including Complainant, proposing to buy the domain name;
19.
all, including Complainant, have been informed that Respondent is not interested in
selling the domain name;
20.
Respondent had never heard of Complainant when the domain name
was registered;
21.
Complainant did not take the first step toward establishing any
sort of online presence until its 1996 registration of the domain name
<teslaind.com>, which Complainant
has apparently been satisfied to use for 9 years, so Complainant could not have
been seeking to divert non-existent internet visitors seeking Complainant.
1)
Complainant has
not met its burden to prove by a preponderance of the relevant, admissible
evidence that Respondent’s domain name is identical or confusingly similar to a
trademark or service mark in which Complainant has rights.
2)
Complainant has
not met its burden to prove by a preponderance of the relevant, admissible
evidence that Respondent has no rights or legitimate interest in respect of the
domain name.
3)
Complaint has
not met its burden to prove by a preponderance of the relevant, admissible
evidence that Respondent’s domain name has been registered and is being used in
bad faith.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted 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;
(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.
Settlement
Documentation
A number of documents have been submitted which appear to constitute
settlement discussions between the parties through their counsel, post-filing
of the Complaint in this action.
Although this Panel is not bound by the Federal Rules of Evidence, such
Rules are instructive and this Panel believes that Federal Rule of Evidence 408[1]
in particular, is helpful on this issue.
Such post-filing exchanges in which the parties discuss the merits of
their claims and defenses and make settlement proposals should not be and are not
admissible evidence in this proceeding.
Even if this documentation were to be admitted for any purpose, there
is nothing therein which in any way supports Complainant’s contention that the
domain name was registered and/or is being used in bad faith.
There is no dispute that Complainant has
rights in a Trademark since it owns a valid, live Trademark registered with the
United States Patent and Trademark Office.
Complainant filed an Application for a Trademark Registration on June 1,
1995 and received Registration Number 2005764 on October 8, 1996 for five (5)
letters in stylized form as follows:
Complainant’s Application represented to the
USPTO that it first used this stylized mark on July 2, 1990 and it sought
registration in International Class 9 for “train passenger cars uninterruptible
power supplies” and in International Class 7 for “portable aircraft engine
starters; locomotive engine starters.”
Complainant does not own a Registration for
the word “tesla” in block
letters. In fact, it seems that another
company, Tesla, Ltd., owns such, registered with the United States Patent and
Trademark Office at Registration Number 0936995 for “radio, welding and sound
recording equipment.”
The domain name <tesla.com> is,
obviously, not “identical” to the Trademark in which Complainant has rights. However, it is at least arguable, and
Complainant does so argue, that the domain name is “confusingly similar” to the
mark in which Complainant has rights.
Although Complainant makes the argument that
the domain name and its mark are confusingly similar, Complainant has not
presented any evidence to support this claim.
In fact, all of the evidence presented by Complainant and the evidence
presented by Respondent clearly
indicate that there is little, if any, likelihood of confusion between the domain
name and the mark. Complainant and the
Respondent are not in the same or even closely related businesses. Respondent does not use the domain name in
connection with any business, but rather for personal reasons. The parties do not have the same customers
or potential customers. See, e.g.,
Maruti Udyog v. Kumar, D2000-1037 (WIPO October 25, 2000) (Respondent’s
domain name <mymaruti.com> held not “confusingly similar” to
Complainant’s mark Maruti for
automobiles since Respondent engaged in a use entirely dissimilar to the goods
provided by Complainant); Talal
Abu-Ghazeleh v. Dabbass, D2000-1479 (WIPO Dec. 24, 2000) (domain name held
not “confusingly similar” to Complainant’s Trademark because Respondent’s use
of the domain name would not cause consumer confusion); Knirps v. Tomforde,
D2001-0008 (WIPO March 20, 2001) (Panel expressed doubt that the domain name
was “confusingly similar” to Complainant’s Trademark because the parties were
engaged in different businesses).
Several Panels have held that block lettered
domain names, even where the letters are identical to those in stylized marks
are not “confusingly similar” thereto. See,
e.g., National Kidney Foundation v. Loss Girasoles, AF-0293 (eRes
August 31, 2000) (domain name <NKF.org> not confusingly similar to
Trademark NKF consisting of a highly stylized rendering of those letters); Maha
Maschinenbur Haldenwang v. Rajni, D2000-1816 (WIPO March 2, 2001)
(Complainant’s Trademarks were highly stylized and hence consumer confusion was
unlikely.). Further, a number of Panels
have held that without the stylized component of the Trademark, Complainant
lacks rights in the words standing alone, which is precisely the situation we
have here. See, e.g., Zero
Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000)
(Complainant lacked “relevant rights” in the word “zero” where its Trademark
was a “stylized form of the word zero . . . rather than the word zero itself”);
Physik Instrumente v. Kerner, D2000-1001 (WIPO Oct. 3, 2000) (involving
stylized German trademark “PI”); Acoustical Publications v. Clintron,
AF-0319 (eRes Oct. 3, 2000) (registration of stylized Trademark “Sound &
Vibration” had disclaimed the words “sound” and “vibration”); High-Class
Distribs. v. Online Entm’t Servs., D2000-0100 (WIPO May 4, 2000) (involving
stylized U.S. registered trademark “High-Class by Claudio Budel” with
disclaimer of exclusive right to use “High Class” apart from the mark as show);
Brisbane City Counsel v. Warren Bolton Consulting, D2001-0047
(WIPO May 7, 2001) (Stylized mark including words “Brisbane City” may have
acquired distinctiveness, but the words “Brisbane City” by themselves were
merely descriptive of a geographical location and had no secondary meaning).
Further, in many instances, it has been said that when one “peels away the graphic element, all that remains is a descriptive or generic word”. Robert A. Badgley, Domain Name Disputes 6-52 (Aspen Law and Business Supp. 2003).
In Quest Air Technology v. Lee, AF-1006 (eRES, October 30,
2001), the Panel observed the following:
The Complainant’s trademark consists of a stylized rendition of the word quest and air. The words themselves only constitute part of the mark and not the mark itself. The trademark is for the combination of the design and the words, not just the words themselves. It is not obvious to this Panel that the mere letters “questair” are confusingly similar to a trademark that consists of a stylized rendering of those letters, where the design of the letters constitutes an integral part of the trademark. The Complainant does not present any evidence that would prove such a confusing similarity.
Under all of these circumstances, it cannot be fairly said that Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
Although Complainant has made various claims
regarding Respondent’s lack of rights or legitimate interests in respect to the
domain name, Complainant has presented no evidence whatsoever to support these
contentions. Although it is not
Respondent’s burden to prove that it has rights or legitimate interests in
respect to the domain name, Respondent has in fact presented substantial,
relevant, admissible and persuasive evidence that Complainant registered this
domain name on November 4, 1990, not knowing of the existence of Complainant,
for purely personal reasons and has utilized the domain name for
non-commercial, personal e-mail and other appropriate services. Complainant has presented no evidence to in
any way indicate that the sworn representations of Respondent in this regard
are in any way to be questioned.
Such a use by Respondent is certainly a
legitimate one. Nishan Sys., Inc. v.
Nishan, Ltd., 2003-0204 (WIPO May 1, 2003).
Further, “Tesla” seems to be both a surname
of a famous person and a common term, at least in the field of
electromagnetics. Panels have often held
that absent bad faith or no legitimate interest, the first to register such a
generic or merely descriptive word should prevail. See, e.g., Summner v. Urvan, D2000-0596 (WIPO July 24,
2000) (sting); Fur Munchen v.
Peraroservice, AF-0422 (eRes. Nov. 19, 2000) (tombola); First Am. Funds
v. Ult. Search, 2000-1840 (WIPO Apr. 20, 2001) (first american); Weider
Pubs. v. Nextlevel.com, D2001-0050 (WIPO Mar. 10, 2001) (mens fitness); Zero
Int’l Holding v. Beyonet Servs., Case No. D2000-0161 (WIPO May 12, 2000)
(zero).
Lastly, Respondent’s use is also certainly a legitimate,
non-commercial, fair use of the domain name which demonstrates rights to and
legitimate interests in the domain name.
Policy ¶ 4(c)(iii).
Under these circumstances, Complainant has
not met its burden to prove by a preponderance of the relevant, admissible
evidence that Respondent has no rights or legitimate interest in respect to the
domain name.
Likewise, although Complainant has claimed
bad faith registration and use, it has presented absolutely no evidence
whatsoever to indicate that Respondent registered and/or is using this domain
name in bad faith in any of the respects set forth in Policy ¶ 4(b) or
otherwise.
Complainant in this and other ICANN proceedings,
must keep in mind that a Complainant has the burden to prove by a preponderance
of the relevant, admissible evidence each and every one of the three (3)
elements of the Policy. Complainant has
simply failed to do so in this action.
Having failed to establish any, much less
all, of the three elements required under the ICANN Policy, the Panel concludes
that the relief requested shall be DENIED.
M. Kelly Tillery, Esquire, Chair and Panelist
Hon. Marilyn W. Carney (Ret.), Panelist
G. Gervaise Davis, III, Panelist
Dated: December 5, 2005
[1] “Evidence of (1) furnishing or offering or promising to furnish, or (2) accepting or offering or promising to accept, a valuable consideration in compromising or attempting to compromise a claim which was disputed as to either validity or amount, is not admissible to prove liability for or invalidity of the claim or its amount. Evidence of conduct or statements made in compromise negotiations is likewise not admissible. . . .” Fed. R. Evid. 408.
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