Tesla Motors, Inc. v. Domain Administrator / Terra Serve
Claim Number: FA1507001627094
Complainant is Tesla Motors, Inc. (“Complainant”), represented by John W. Crittenden of Cooley LLP, California, USA. Respondent is Domain Administrator / Terra Serve (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tsla.com>, registered with Rebel Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2015; the Forum received payment on July 2, 2015.
On July 3, 2015, Rebel Ltd confirmed by e-mail to the Forum that the <tsla.com> domain name is registered with Rebel Ltd and that Respondent is the current registrant of the name. Rebel Ltd has verified that Respondent is bound by the Rebel Ltd 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 July 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2015 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@tsla.com. Also on July 6, 2015, 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.
A timely Response was received and determined to be complete on September 8, 2015.
On September 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Tesla Motors, Inc. is a Delaware corporation located in Palo Alto, California founded in 2003.
Complainant is an automotive and energy storage company renowned for its electric automobiles that it designs, manufactures, and sells, along with a broad variety of automotive and energy related products and services, all of which are provided under a family of TESLA marks.
Complainant owns the TESLA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,443,470, registered Dec. 3, 2013).
The <tsla.com> domain name is confusingly similar to the TESLA mark. The disputed domain name incorporates a misspelled version of Complainant’s mark by omitting the letter “e” and inserts the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name, nor any name containing Complainant’s mark. Further, Complainant has not authorized or licensed Respondent to use any of its trademarks. Additionally, the use of the <tsla.com> domain name to divert Internet users to a website that features pay-per-click hyperlinks does not constitute a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent’s website resolves to a parked website with commercial hyperlinks that link to Complainant’s own products and stock market related topics.
The disputed domain name was registered and is being used in bad faith. Respondent has been involved in multiple UDRP disputes that have resulted in transfer, which demonstrates bad faith under Policy ¶ 4(b)(ii). Further, Respondent’s website provides links to companies in direct competition with Complainant, which indicates that Respondent registered the disputed domain name to disrupt Complainant’s business. Additionally, Respondent’s operation of a website that includes commercial hyperlinks supports a finding of bad faith under Policy ¶ 4(b)(iv). Finally, Respondent had at least constructive knowledge of Complainant’s well-known TESLA mark at the time of acquisition, which is sufficient to establish bad faith pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent contends as follows:
Respondent had no intent to target Complainant or improperly use its trademark when it registered the Disputed Domain. In the interest of saving the cost involved in defending its rights to the Disputed Domain, Respondent stipulates for the Panel to transfer the Disputed Domain to Complainant.
Complainant has trademark rights in the TESLA mark.
Respondent, via its formal Response, consents to having the at-issue domain name transferred to Complainant.
Paragraph 15(a) of 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; 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.
Preliminary Issue: Consent to Transfer
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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
Since there is a clear indication in the record that Respondent agrees to transfer the at-issue domain name to Complainant, the Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Nat. Arb. Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. In the instant case, Complainant establishes its rights in the TESLA mark through its USPTO trademark registration of such mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, Respondent’s <tsla.com> domain name is fashioned by simply deleting the “e” from Complainant’s trademark and appending the top level domain name to the resulting text. The resulting differences between the TESLA trademark and the at-issue domain name are insufficient to materially distinguish the domain name from Complainant’s TESLA trademark under the Policy. Therefore, the Panel finds that Respondent’s <tsla.com> domain name is identical to Complainant’s TESLA trademark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“[T}he addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i)”).
Respondent’s unequivocal consent-to-transfer the at-issue domain name to Complainant compels the Panel to order that the <tsla.com> domain name be transferred as requested and in light of the foregoing the Panel finds no reason to provide further analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tsla.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 13, 2015
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