Tesla Motors, Inc. just won the rights to the Domain name TSLA.com is a one member UDRP panel decision although it was willing to give up the domain name to Tesla.
It’s a shame that the case had to go to a decision.
“”Respondent, via its formal Response, consents to having the at-issue domain name transferred to Complainant.””
Many domainers have the opinion that they will always have the option of just giving a domain name to a trademark holder but this once again shows that is not always the case.
The difference is that since the case went to a decision the domain owner now has a lose on the UDRP records (actually 2).
The domain owner did successful defend a UDRP on the domain name ewomen.com
The one member panel of Paul M. DeCicco on the issue of “Consent To Transfer”
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.
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
Respondent’s unequivocal consent-to-transfer the at-issue domain name to Complainant compels the Panel to order that the
If I were the TESLA, I would go after TES.LA, because whois shows email address @example.org, which is reserved by ICANN, so it would be easy victory, since the whois proves bad faith registration of John Doe.
A Trademark application for TSLA was filed 8/19/2014, published for opposition 8/11/2015, is still under examination. The app is for G&S related to Software and the applicant appears totally unrelated to TeslaMotors. There are no registered trademarks at this time for TSLA.
-TSLA.COM was originally registered in 1995, Tesla Motors was created in 2003.
-Tesla.com created in 1992 is registered to a consulting company.
-Several companies have TESLA trademarks ranging from television chips to kitchen utensils.
Forgive me if I’m naïve, I’m certainly not demanding those who paid for an education in advanced matters such as these to take time bringing others up to speed when they have every prerogative to spend today using that competency to get ahead, BUT why did the registrant have no rights to TSLA.com? Was it because they bought the domain AFTER TeslaMotors secured the stock symbol? Did the registrant automatically capitulate rights by stating a willingness to forfeit the domain? Furthermore, would ANY registrant have rights to TSLA had they utilized the domain for a new company that matched the acronym, for instance Transportation Services of Los Angeles?
@steve brady Got to say I agree with what you say. Why on earth did the Respondent give up soooo easily ? And even if Tesla(tm) had applied for a TM for “TSLA” then it would show that they themselves considered it a seperate Mark and therefore could not then claim that the “Tesla” TM entitled them to the domain. In all honesty yhe guy threw his hands up much much too quickly. If anyone on here gets a Threat of a UDRP and has’nt the balls to fight it (providing its not a well known TM) please feel free to transfer the domain to me and I will fight it for you !!
One would understand if they, owing teslamotors.com would go after teslacars.com or teslamoto.rs.
But TSLA.com? This is a strange case indeed.
A propos, do they own tesla.cars?
This one is a mystery I must admit. I would have told them to pound salt.
I am more than bothered by this part of the decision.
“Furthermore, Respondent’s domain name is fashioned by simply deleting the “e” from Complainant’s trademark and appending the top level domain name to the resulting text. ”
This is utter BS and a prime example of the tendency to work backwards to make the evidence fit his PRIOR conclusion. An impartial panelist would have thrown the complaint out as unfounded.
IMO, it seems there are a bunch of clowns making decisions on these top notch domain names. Sadly, a short 4 character domain name registered way back before Tesla Motors was ever created is now theirs to keep.
This decision is another head scratcher. The original domain owner registered TSLA with an intent to squat on Tesla by removing the “E” to confuse the public? LOL. IMO, such an unintelligent response, such a joke.
Can original owners forecast 8 years ahead? TSLA can mean anything. It is a premium 4 character domain. It would make more sense if this domain featured Tesla links via domain parking Even in that case, there are disclaimers that indicate that third party links are not generated based on domain parking company and/or domain owner.
IMO, this owner probably didn’t want to fight Tesla, even though he could have won this case with a 3 member panel. Don’t let these companies/corporations take your domain names. It is worth your time and money to defend your domain names. Make an example out of these domain stealers.
If you type in TSLA.com, it does point to a car website which is a one-word generic. Maybe this is the problem that influenced the case. It can’t operate in the car space because it is confusing to the generic public. The “E” deleted is a silly response. How would the original owner know what would happen 8 years later?
Original registrant got into a time machine, went 8 years into the future, learned about Tesla, and then returned to 1995 to delete the “E” to confuse the generic on Tesla name 20 years later.
If the 1-panel mentioned this domain name is pointed to a car website, then that shows more evidence of confusing Tesla brand with this car website (bad faith). This is never mentioned in the case.
Deleting the “E” was thought of in 1995, 8 years before Tesla launched their company? 🙂 C’mon, please come up with a better response than this. IMO, it makes the UDRP appear as a circus of clowns trying to stay relevant.
Let it be known that everything written in this post is in my honest opinion. These poor decisions are undermining the domain industry as we know it.
.Car and .Cars have not launched yet but Tesla will be able to get those domains in the Sunrise period
Well you would have to ask the domain holder who voluntarily gave up the domain
There are hundreds of TMs contain the characters “TES” or “TSL” etc. Are we going to say that all domains that contain any of the letters T E S L or A are at risk of UDRP ???
john
The law regarding domain names and trademarks is a lot more complicated than one word think which is why it Took Mr. Levine over 500 pages to write a book on it
http://www.thedomains.com/2015/08/21/lawyer-udrp-panelist-gerald-m-levine-writes-the-definitive-book-on-udrps/
If you want to simplify it, it’s the domain and the use of the domain that carries the day.
You looked at the domain, did you look how it was being used ?
http://www.screenshots.com/tsla.com/2015-05-28
You see a parked page in which every link is going to the car maker or refers to the stock symbol of the company.
Had the domain been used by the Texas Surplus Lines Association I’m sure the UDRP would not have been successful.
http://www.abbreviations.com/TSLA
Mike ,I hadnt really looked ta the past use, but yes I guess with the adverts for Tesla bad faith could be proven.The trouble is that total non use of a domain also seems to equate to bad faith so cannot win .
Mike, by the way I always seem full of coincidences. Just as I read this post of yours about Gerald Levine I was writing email to a “Ronald” Levine about a book.
Non use can also be bad faith
like I said if it was an easy issue you would not need 500 pages+ to explain it
If you’re not ready to buy the book, TheDomains article from 8/21 outlines 3 categories of circumstances, one being:
“The second category of owners consists of those with weak trademarks composed of common elements that domain name holders are lawfully allowed to register and use as long as they have not registered the domain names with the intention of taking advantage of the trademark owners. ”
The owner of TSLA.com could have made it safely to this category with a simple sales lander. Developing a site that reviews, evaluates and puts forth opinions of Tesla vehicles, using a domain with their initials, or contacting Tesla, is probably just as risky as the affiliate links that cost him.
The problem is that although the UDRP allows a Complainant to found a Claim based on Trade Mark rights, they do NOT then seem to allow a Respondent to use Trade Mark laws to respond, which if course is why the Lawyers suggest to their clients that they file a UDRP because they know full well they could not win a Trade mark suit because they could not show passing off etc. THAT in a nutshell ,for me, is the gross inequality of the UDRP as it now seems to be used.
John
and remember the trademark group want UDRP reform to make it easier for them to grab domains
Mike, yep I can imagine that they do. I am hoping that someone might look at what possibilities there are open for someone else to take a legal action ,in Europe perhaps, where laws are different , in relation to the abuse and unfairness of the UDRP .In particular one areaI would like to look at is WIPO and their seeming lack of independence from the Complainants who sometimes even use WIPO granted TM’s in the WIPO run process. Another area maybe would be unfair contract terms . I know when I refused to sign an undertaking in the WIPO UDRP document to waive any rights to sue WIPO or the Panelist for any decisions WIPO conceded and let that be excluded . They also advsed me that they themselves believed the UDRP process had gone to far and decisions being made that should not be.
TSLA.com is the best Tesla-related domains Tesla Motors will acquire. IMO, I don’t see the owner of Tesla.com selling unless they choose to do so. They’ve owned Tesla.com since 1992, it’s original creation date.
Is this billionaire dollar company unable to secure Tesla.com? What would it take to get this domain name? The domain is not being used. It is parked under a placeholder at a registrar. Owner is based out of San Francisco, close to Fremont. Tesla is one of the few Silicon Valley companies to not use a generic name for their website.
For now, Tesla will have to settle for TSLA as a pointer to TeslaMotors.com. It would be wise to work on a deal to acquire Tesla.com from the SF-based owner. Don’t see how a billion dollar corporation is not using their generic domain name.
meant “its” original creation date
I don’t consider Tesla particularly generic. He was a famous inventor in the electrical field and his name is well known to the public. To me it’s another example of a major corporation trying to hijack a well known word to use it for commercial purposes and then use the courts to take over the generic versions.
Your point about the “e” in the domain is well founded. How could someone drop the “e” 8 years before Tesla Motors happened and it be considered a bad registration. The owner should have appealed.
I would say call for boycott of Tesla Motors or some kind of publicity, the company too tight to buy a domain but happy to pay lawyers money to take from owners for Zero $ .Crap company and I do not know why on earth the owners did not go to Court . Yes it will take year or two or three but think of the satisfaction of getting “Justice” , I AM !!