The Freename Forum

For the second time in quick succession, the electric car manufacturer Tesla Inc. has failed in a dispute over a ‘tesla’ domain because the domain holder operates a proper business. At teslaunch.net, the opponent of the UDRP proceedings offers accessories and information on Tesla vehicles.

The US company Tesla Inc., manufacturer of electric vehicles, batteries and solar systems and owner of numerous ‘TESLA’ brands, believes its rights have been infringed by the teslaunch.net domain. It initiated UDRP proceedings before The Forum in October 2024. Among other things, it claims to have used the ‘TESLA’ trademark continuously since 2003; registrations with the US Patent and Trademark Office (USPTO) date back to December 2013 and June 2014, among other dates. It can be reached on the internet at tesla.com. The domain teslaunch.net was registered in April 2022; it contains the trade mark ‘TESLA’ in its entirety and differs only by the additional characters ‘unch’ and the ending .net. The opponent has no right or legitimate interest in the domain under which he operates a website displaying the trade mark ‘TESLA’ together with images of Tesla vehicles. He intends to sell the complainant's goods to third parties. The opponent, ‘hao zou / FEL - Friendly Elder Life Store’ based in China, did not enter an appearance. The US lawyer Steven M. Levy was appointed as the deciding judge.

Levy dismissed Tesla's complaint because it was a legal matter for which the procedure under the UDRP was not suitable (The Forum, Claim Number: FA2410002120768). He confirmed the complainant's trade marks and that the domain is confusingly similar to them. However, the complainant had not provided prima facie evidence that the opponent was acting without authorisation. Any allegation that the opponent's activities infringed the complainant's trade mark rights went beyond the scope of the UDRP and was better suited to be clarified before a competent civil court. Among other things, the complainant argued as a precautionary measure that the opponent could not rely on the Oki Data defence. In the ‘Oki Data Test’ (Oki Data Americas Inc. v. ASD Inc. - WIPO Case No. D2001-0903), the domain owner must fulfil four criteria from which a legitimate use of a ‘trademark domain’ can arise: (1) the opponent must be currently offering goods or services, (2) the website must be used solely to distribute those trademarked goods or services, (3) the website must unambiguously and prominently display the relationship between it and the trademark owner, and (4) the opponent must not be attempting to dominate the domain market with respect to the trademark. From the screenshots submitted by the complainant, it would appear that the opponent's website displays the term ‘TESLAUNCH’ in two different fonts, neither of which is similar to the one used by Tesla. Furthermore, there are pictures of the complainant's vehicles and, in a menu on the left, designations such as ‘Add Your Tesla’, ‘Model 3’ and ‘Model Y’. It also displays titles of blog posts such as ‘Can You Put A Solar Panel on a Cybertruck?’, ‘What Accessories Are Available for the Cybertruck’ and ‘Should I Buy a Used Tesla?’ as well as images of various third-party accessories for Tesla vehicles.

Levy reviewed the Oki Data requirements and found that the opponent was clearly not claiming to sell Tesla products, but only third-party products. At the bottom of each page there is a note stating that ‘TESLAUNCH’ is not affiliated with Tesla Inc., that the Tesla-related content is for identification purposes only, and that the accessories offered are not from Tesla. And there is no indication that the opponent has registered any other ‘Tesla’ domains. Accordingly, the opponent proves to be a seller of third-party accessories for Tesla vehicles. This is not a question of the Oki Data case, but speaks in favour of permitted use. Accordingly, the complainant had not provided prima facie evidence that the opponent had no right or was not authorised to use the domain teslaunch.net. The opponent was therefore using the ‘TESLA’ trade mark lawfully. In Levy's view, all the facts and evidence in this case indicate that the case goes beyond the scope of the UDRP with regard to trade mark law issues. In addition, although an application for the opponent's ‘TESLAUNCH’ trademark was rejected by the trademark office due to its similarity to the ‘TESLA’ trademark, another trademark application procedure is currently underway and has not yet been completed. This does not imply that the opponent is the trade mark owner. However, should the USPTO grant this more recent application and should the parties become involved in opposition proceedings before the U.S. Trademark Trial and Appeals Board (TTAB), this would also raise issues that go beyond the scope of the UDRP.

Levy also examined the existence of bad faith on the part of the opponent when registering and using the teslaunch.net domain, but did not consider the requirements to be met here either. It was less likely that the opponent was a cybersquatter attempting to exploit the complainant's trade mark in an unauthorised manner than it was likely that he was a seller of accessories and parts for Tesla vehicles. The opponent's activities did not fulfil the requirements of acting in bad faith. Finally, Levy addressed the complainant's argument that the opponent had failed to fulfil its obligations to its registrar to ensure that the domain would not infringe third party rights in any way. This argument surprised Levy, as this was a contractual matter solely between the domain holder and its registrar, with which the complainant had nothing to do and which had no place in UDRP proceedings. Levy thus dismissed Tesla's complaint and ruled that the domain teslaunch.net would remain with the opponent.

This is not the first case that Tesla has lost. Again, as in the dispute over teslashop.com in June 2024, Tesla was represented by Sarah Alberstein of ArentFox Schiff LLP. Again, the argument that the opponent could not rely on the Oki Data defence did not apply, albeit for different reasons. Perhaps Tesla should seek other legal support. In any event, the current case is another good example (like the urinal domain dispute discussed last week) of a panel taking its duties and the limited scope of the UDRP seriously, especially when no response is filed by the opponent.

The UDRP decision on the domain teslaunch.net can be found at:
https://www.adrforum.com/DomainDecisions/2120768.htm

The UDRP decision on the domain teslashop.com can be found at:
https://www.adrforum.com/DomainDecisions/2096260.htm