While Hertz and Tesla were making headlines over their disagreement about an order of 100,000 electric cars, a little-noticed cybersquatting dispute involving both companies was playing out in a case under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
The dispute — which I discuss in a new UDRP case study video — involved the domain name <teslahertz.com>, resulting in an order transferring the domain name to Hertz.
The WIPO panelist easily found that Hertz proved all three elements of the UDRP test, but the decision raises an interesting question about what happens when a disputed domain name is confusingly similar to two different trademarks owned by two different companies.
As I discuss in the video, the WIPO Overview says:
Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks… is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element.
But the WIPO Overview also says something else on this issue, something the panel did not address. Tesla was not a co-complainant, and there’s nothing in the decision to indicate that Tesla consented to Hertz filing the case. Here’s what the WIPO Overview says:
The complaint may include evidence of the third-party mark holder’s consent to file the case, and request that any transfer order be issued in favor of the filing complainant only. Absent such consent (and, where this was considered appropriate, having failed to reach the concerned third party by Procedural Order via the complainant), some panels have ordered transfer of the domain name without prejudice to the concerned third-party’s rights. In certain highly exceptional circumstances, panels have ordered the cancellation of the disputed domain name.
In other words, by not getting Tesla’s involvement in this UDRP case, Hertz risked getting a decision to cancel the domain name instead of transfer it. And although that didn’t happen, the decision leaves a number of questions unanswered:
Does Hertz really have the right to a domain name that includes the TESLA trademark?
What if Hertz starts to redirect the domain name to its own website – will Tesla object?
Could Tesla even file its own UDRP complaint against Hertz now for the same domain name?
These questions may seem unlikely, but the fact that I can even ask them means that trademark owners should really remember to address these issues up-front, before filing a UDRP complaint against a domain name that contains someone else’s trademark.
As I also discuss in the video, this dispute over <teslahertz.com> also contains another lesson for trademark owners : Address domain name issues before making any big announcement, such as one that involves another company, a new product name, a merger, or a corporate name change.
For a link to the UDRP decision in this case, see the description in my video.
