DECISION

 

Tesla Inc. v. hao zou / FEL - Friendly Elder Life Store

Claim Number: FA2410002120768

 

PARTIES

Complainant is Tesla Inc. ("Complainant"), represented by Sarah Alberstein of ArentFox Schiff LLP, District of Columbia, USA. Respondent is hao zou / FEL - Friendly Elder Life Store ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <teslaunch.net>, registered with Tucows Domains 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.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 16, 2024; Forum received payment on October 16, 2024.

 

On October 17, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <teslaunch.net> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@teslaunch.net. Also on October 21, 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 November 13, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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

Complainant owns all right, title, and interest in and to the trademark TESLA, which Complainant has used and registered in the United States and other countries around the world (e.g., United States Patent and Trademark Office (USPTO) Reg. No. 4443472 dated December 3, 2013, Reg. No. 4554429 dated June 24, 2014, and others). Complainant's TESLA trademark has been used continuously since as early as 2003 and is used today in connection with goods that include vehicles, vehicle parts and accessories, battery and solar goods, toys, and lifestyle goods. It also owns the domain name <tesla.com> which it uses for its website and email addresses.

 

The <teslaunch.net> domain name, registered on April 19, 2022, is confusingly similar to the TESLA mark in that it incorporates the entirety of the mark and only adds the letters "unch" and the ".net" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known thereby and uses it to host a website that prominently displays Complainant's TESLA marks (among other of Complainant's intellectual property, including its proprietary photographs) and purports to sell Complainant's products to the public.

 

The disputed domain name was registered and is used in bad faith where it hosts a website that impersonates Complainant and mirrors its official website purporting to offer TESLA-branded products for sale. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant has demonstrated its ownership of rights to the TESLA trademark and the <teslaunch.net> domain name is identical or confusingly similar to the mark;

-       Complainant has not made a prima facie case that Respondent lacks rights or legitimate interests where it is engaged in the sale of accessory product and appears to be making a nominatively fair use of Complainant's mark;

-       Respondent has not registered and does not use the disputed domain name in bad faith based on its above-mentioned activities; and

-       Any claim that Respondent's activities are infringing on Complainant's trademark rights is beyond the scope of the Policy and would be better suited to resolution in a court of competent jurisdiction.

 

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 claims rights in the TESLA mark through registration with the USPTO. Registration of a mark in this manner is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).") Complainant provides screenshots of the USPTO website evidencing its trademark registrations and, based on this evidence, the Panel finds that Complainant has demonstrated rights in the claimed mark under Policy ¶ 4(a)(i).

 

Next, Complainant contends that the disputed domain name is confusingly similar to its mark as it adds only adding a few letters to the mark and a TLD. When a disputed domain name wholly incorporates a complainant's mark, Panels typically find that the addition of a few letters is insufficient to distinguish the domain name from the mark. See Ancestry.com Operations Inc. v. Nadeem Qadir a/k/a NA Seocho c/o NA a/k/a Bladimir Boyiko a/k/a Free Domains Parking c/o Andrey Vasiliev, FA 1327838 (Forum July 13, 2010) (finding the respondent's <familytreemakers.com> domain name confusingly similar to the complainant's FAMILY TREE MAKER trademark because the addition of the letter "s" was insufficient to distinguish the domain name from the mark).  Similarly, gTLDs are usually irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."). 

 

Complainant's TESLA mark is immediately recognizable in the disputed domain name and the added letters "unch" create a portmanteau of the words "Tesla" and "launch". Other portmanteau domain names have been found to be confusingly similar to their related trademarks. In Perfumebay.com Inc. v. Ebay Inc., 506 F.3d 1165 (9th Cir. 2007), the U.S. Third Circuit Federal Court of Appeals upheld a finding that the conjoined term <perfumebay.com> is an infringement of the famous eBay trademark. Similarly, the domain name <porchellafestival.com> was found to be confusingly similar to the CHELLA mark leading the Panel to explain that "[c]reating a portmanteau formed by combining a complainant's mark with other words satisfies the confusing similarly prong of the Policy ¶ 4(a)(i)." Coachella Music Festival, LLC v. Kine Paulsen, FA 1892090 (Forum May 11, 2020). See also Coachella Music Festival, LLC v. Dara Russell / Teachella Foundation, Inc., FA 2106956 (Forum Aug. 27, 2024) (<teachella.net> and <teachella.org> found to be confusingly similar where the disputed domains "contain approximate phonetic components from Complainant's COACHELLA and CHELLA marks" and held that "[c]ombining a complainant's mark with other words satisfies the confusingly similarly prong of the Policy ¶ 4(a)(i)."). Respondent has not come forth to claim that its domain name is intended to have a different meaning and the fact that it offers products relating to Complainant's automobiles would overcome any explanation other than that the disputed domain name is intended to invoke the TESLA mark in the minds of those visiting its website.

 

Further, addition of the ".net" gTLD does not affect the recognizability of Complainant's mark in the disputed domain name. As such, the Panel finds that the disputed domain name is confusingly similar to the mark 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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.").

 

Complainant first asserts that Respondent lacks rights or legitimate interests in the <teslaunch.net> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the TESLA mark. WHOIS information is often referenced when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a registrant name as "Hao Zou" and the registrant organization as "FEL - Friendly Elder Life Store"). Further, Complainant states that "Respondent is not now, and has never been, licensed or authorized by Complainant to use any of Complainant's TESLA Marks, or to register or use any domain name incorporating any of Complainant's TESLA Marks or anything similar thereto." Respondent has not participated in these proceedings to claim otherwise.

 

Next, Complainant argues that "[t]o the extent Respondent could be considered a reseller, Respondent is not entitled to the Oki Data defense." Under this defense, a sales or service dealer of trademarked goods (whether authorized or unauthorized) may demonstrate that its domain name use is bona fide  where certain conditions are met. Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). This oft-cited and venerated test requires that a respondent:

 

i.         Must actually be offering the goods or services at issue;

ii.        Must use the site to sell only the trademarked goods, otherwise it could be using the trademark to bait Internet users and then switch them to other goods;

iii. Must accurately disclose the relationship between the registrant and the trademark owner; and

iv. Must not try to corner the market in all domain names, thus depriving the owner of the trademark from reflecting its own mark in a domain name.

 

Id.

 

Complainant has provided screenshots of Respondent's website which displays the term TESLAUNCH at the top in two different type-fonts, both of which are different from the distinctive graphic form used by Complainant. The marquis image on the page is a photo of one of Complainant's vehicles and the menu links at the top of the page are "Add Your Tesla", "Hot Sales Collections", "Model 3", "Model Y", "Model S", "Model X", "Cybertruck", and "Blog". The submitted screenshots of the "Blog" page show further photos of TESLA vehicles with blog titles such as "Can You Put A Solar Panel on a Cybertruck?", "What Accessories Are Available for the Cybertruck", "Should I Buy a Used Tesla?" and "What is Paint Protection Film?" The next screenshot is titled "Christmas & New Year Big Sale" and displays sales images of various accessories for use with Complainant's vehicles such as "Performance Spoiler For Model Y – Rear Trunk Lid", "Real Carbon Fiber Rear View Mirror Covers For Tesla Model S", "Red Brake Caliper Covers (4 Pcs) For 2017-2023 Tesla Model 3/Y", "Alcantara Cushion For Tesla Model 3/Y/X/S/Cybertruck", and many others.

 

Applying the Oki Data test to the present case, the Panel finds that i) Respondent does not claim or appear to be selling Complainant's products but it does actually sell the products it is promoting as demonstrated by Complainant's submission of screenshots showing reviews and comments by Respondent's customers; ii) while Respondent is selling products that originate from other companies, they are all intended and promoted for use with Complainant's vehicles – this issue is discussed in further detail below; iii) each page of Respondent's website contains the footer "© 2022 TESLAUNCH LLC. All Rights Reserved. TESLAUNCH is not affiliated or supported by Tesla, Inc. All manufacturer names, symbols and descriptions used in our images and text are for identification purposes only. It is neither inferred nor implied that any item for sale is a product authorized by any vehicle manufacturer displayed on this website or is related to any vehicle manufacturer in any way." While this message is at the bottom of the page, it is in a contrasting text color and does appear on all pages of the site; and iv) there is no indication that Respondent has registered more than one domain name incorporating Complainant's mark or that it is otherwise seeking to corner the market for such domains.

 

From the submitted screenshots of Respondent's site, the Panel does not conclude that Respondent is a sales or service dealer or reseller of trademarked goods. Rather, it appears that Respondent is a seller of accessories that do not bear Complainant's trademark but which may be used to enhance or repair Complainant's vehicles. This puts the case on a footing which is similar to that presented in the decision of YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, FA 1675141 (Forum July 11, 2016). In that case, the Panel applied the Oki Data test but found that selling accessory handles for Complainant's travel mugs, even those that could be used with third-party mugs, fits within the umbrella of nominative fair use as set out in the U.S. case of Toyota Motor Sales U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) (decision prohibiting use of domain names <buy-a-lexus.com> and <buyorleaselexus.com> vacated and remanded where "[t]he nominative fair use doctrine allows such truthful use of a mark, even if the speaker fails to expressly disavow association with the trademark holder, so long as it's unlikely to cause confusion as to sponsorship or endorsement..")

 

Based on the above analysis, the Panel finds that Complainant has not made a prima facie case that Respondent lacks rights or legitimate interests in the <teslaunch.net> domain name. Although Respondent has not submitted a Response in this case, the evidence of record indicates a likelihood that Respondent is making a bona fide offering of goods and is engaged in a nominatively fair use of the TESLA mark. 

 

Furthermore, the current facts and evidence present a case that is beyond the scope of the Policy as it involves questions of whether the disputed domain name infringes Complainant's trademark. As stated in the decision of Arbor Networks, Inc. v. Benjamin Dynkin / Atlas Cybersecurity, FA 1899115 (Forum July 17, 2020), "[i]f the Complainant wishes to bring proceedings against the Respondent for trade mark infringement, passing off, or question the assertions and evidence of the Respondent's conduct contained in the Response, such a proceeding is more appropriately brought in a court of competent jurisdiction.".

 

Finally, Complainant's mention of Respondent's ownership of a USPTO trademark application for the term TESLAUNCH (Ser. No. 97487589) is noteworthy. This application was rejected by the USPTO based on a likelihood of confusion with the registered TESLA mark. Not mentioned in the Complaint, however, is a more recent application filed by Respondent for the same mark at the USPTO (Ser. No. 98685039) which is pending as of this writing. While such a pending application could, under other circumstances, suggest that a respondent is making demonstrable preparations for a bona fide offering of goods or services, in the present case, where Respondent's business is already active and ongoing, it does not provide evidence to support Respondent under Policy ¶ 4(c)(i) or that it otherwise has rights or legitimate interests. IBUY Stores Inc. v. Registration Private, Domains by Proxy, LLC / Albert Houllou, IBUY.com, D2015-1246 (WIPO Sep. 22, 2015) (at FN2: "because [Respondent's trademark applications] have yet to be examined by the USPTO (which may find that these marks are also merely descriptive), these applications do not provide any evidence of Respondent's trademark rights"). However, should the USPTO grant this more recent application and should the parties become engaged in opposition proceedings at the U.S. Trademark Trial and Appeals Board (TTAB), this would also involve issues that are beyond the scope of the Policy.

 

Registration and Use in Bad Faith

The Policy was created to address obvious cases of cybersquatting. It was not intended to address all trademark disputes involving domain names. See WIPO Jurisprudential Overview 3.0 at ¶ 4.14.6.

 

Complainant asserts that Respondent had actual knowledge of the TESLA mark at the time that it registered the <teslaunch.net> domain name and the Panel accepts this in light of Respondent's activities selling products which relate to Complainant's vehicles. Complainant goes on to claim that the "website associated with the Disputed Domain Name mirrors Complainant's official website at www.tesla.com; Respondent prominently displays Complainant's proprietary images and other trademarks on the website shown at the Disputed Domain Name; Respondent purports to offer the sale of TESLA-branded products of Complainant; [and] Respondent holds itself out as Complainant…" The Panel finds that the submitted evidence does not support these contentions sufficiently to meet the preponderance of the evidence standard which is required in UDRP cases. See WIPO Jurisprudential Overview 3.0 at ¶ 4.2. While there are some similarities between the sites (i.e., a logo at the top, menu choices, and a large image or images followed by product images and prices offering accessories for sale), there are also many differences (i.e., Respondent uses the "Teslaunch" name at the top in a graphic form which is different from Complainant's TESLA logotype, the site uses a white-and-rust color scheme, it has only a single marquis image and a slightly different layout of product/accessory images and prices, nearly all of the product images do not appear to be the same as those displayed on Complainant's site). Further, Respondent does not appear to be offering "TESLA-branded products of Complainant", as asserted, but rather third-party products, with accompanying descriptions that mention the specific Tesla vehicle models for which they are suited. Also, Respondent makes prominent and repeated use of the Teslaunch name and includes the notice "© 2022 TESLAUNCH LLC" in the footer of each page. 

 

Relevant to this last point, and as noted above, Complainant submits screenshots of negative online reviews of Respondent's site and claims that "consumers are likely to misattribute these negative reviews to Complainant to Complainant's detriment." However, the screenshots indicate that, while 17% of the reviews are, in fact, negative (i.e., one or two stars), 80% of them are actually positive (i.e., four or five stars). Further, a close reading of the one-star reviews submitted into evidence by Complainant reveals criticism of Respondent as an aftermarket seller and none appear to show direct or misattributed criticism of Complainant. Rather than demonstrating that "Respondent holds itself out as Complainant", this evidence indicates that customers understand that Respondent is not Complainant but is a separate entity selling accessories for use with Complainant's vehicles.

 

On balance, the Panel finds it more likely that Respondent is not a cybersquatter seeking to improperly target or capitalize on Complainant's trademark but is, rather, a seller of accessories and parts which may be used with Tesla vehicles. When viewed against all of the circumstances of this case, Respondent's activities here do not meet the requirements of bad faith registration and use, either under Policy ¶ 4(b)(iii) (disrupting Complainant's business as a competitor) or ¶ 4(b)(iv) (seeking commercial gain through a likelihood of confusion with Complainant's trademark). Should Complainant feel that Respondent is perpetrating an infringement of its rights in the TESLA trademark, a court of law would be the proper venue for addressing such dispute.

 

Finally, Complainant asserts that "Respondent has failed to discharge its contractual obligation to determine that this domain name does not infringe the rights of a third party" under Policy ¶ 2. The Panel finds Complainant's assertion quite surprising as Policy ¶ 2 is a contractual obligation between the registrant and its registrar to which a complainant does not have privity and thus lacks grounds to assert a cause of action based thereon. Any line of argument based on this section of the Policy has been rejected by UDRP Panels. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), at 3.2.1.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <teslaunch.net> domain name REMAIN WITH Respondent.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: November 19, 2024