Volkswagen files complaint over domain name – assistance requested

Volkswagen AG has filed a complaint in the Czech Arbitration Court (CAC) and wants the domain name transferred to their ownership.

A response has now been filed and an answer should be known in the next ten days.

No matter how this turns out my-gti will continue on but perhaps with a different domain name – in the event that loses and the site is shut down temporarily updates will be provided at

Details of the complaint are below

Factual and Legal Grounds
Factual Grounds
I. Protected rights relied on by the Complainant
a. Registered trade/service mark
i. Registered in one country
ii. Registered in several countries
iii. CTM
b. Well-known/famous mark
II. Complainant’s Rights
a. Owner
b. Are Complainant’s rights valid in the territory where domain name holder is established?
i. Yes
Legal Grounds
I. Domain name is
a. confusingly similar to the protected mark
The manner in which the domain name is confusingly similar to the protected mark:
II. The Respondent does not have any rights or legitimate interest in the domain name(s)
Categories of issues involved:
a. Use of privacy or proxy registration services
b. Diversion of consumers/trade mark tarnishment
III. The domain name(s) has been registered and is being used in bad faith
Categories of issues involved:
a. Registration of a well-known/famous trade mark
b. Use of privacy or proxy registration services
c. Constructive knowledge/prior knowledge of potential rights
d. Other commercial gain
e. Other IP infringement
f. Disrupting the business of a competitor
g. Attracting internet users for commercial gain by creating a likelihood of confusion with the Complainant
IV. Legal basis
Please explain your arguments in detail below.
Factual and legal background
1. Identifications of rights
The Complainant, the Volkswagen AG, is the owner of the well-known “Volkswagen” trademark, which is
registered extensively, either on its own or in combination with other terms and designs, especially the “VW” logo,
as a trademark worldwide. Besides, the Volkswagen AG owns various trademarks with the element “GTI”,
amongst others the international trademark registration “GTI” No. 717592, the German trademark “GTI” No.
39406386 and the US trademark registration “GTI”, No. 1540381, with priority from the years 1987, 1995 and
1999. These trademarks claim protection for the following goods in class 12: automobiles and their parts; engines
for automobiles. Extracts of said trademark registrations from the database of the relevant trademark office are
enclosed as Annex 1.
By virtue of long and intensive use, the Complainant’s trademark “GTI” is well-known by significant parts of the
public and will be associated by them exclusively with Complainant. We submit an excerpt of the Complainant’s
website on which the product offered under the trademark “GTI” is presented as Annex 2.
2. Factual background
The Complainant is the holding company of the Volkswagen Group, which was founded 1937. The Volkswagen
Group is one of the world’s leading automobile manufactures and the largest carmaker in Europe and has been
manufacturing cars, vehicles and vehicle accessories since their founding.
Since 1974 the Volkswagen Group produces a small family car under the trademarks “Golf” and “Golf GTI”. This
car is Volkswagen’s best-selling model and the world’s second best-selling car model with more than 29 million
built by 2012. We enclose an extract of the Internet database Wikipedia with the title “Volkswagen Golf” as Annex
3 and a press article of the magazine “AutoBild” which reports on the new “GTI” on the occasion of the 40th
birthday of the “GTI” model as Annex 4. The car model “Golf GTI” has a large fan community often organized in
fan clubs which arrange “Golf”- or “GTI”-meetings for owners of such cars and people interested in these cars.
In the process of its regular market monitoring activities regarding the fight against piracy, counterfeiting and
copyright infringements the Complainant recently became aware of the domain that was
registered on August 26th, 2008 by the Respondent. A print out of the website showing
such information and the letter of the Registrar disclosing the identity of the Respondent is enclosed as Annex 5.
The domain is used s ince registration for the offer of copyright infringing software updates for the navigation
system “RNS” used in the cars of the Complainant, inter alia the “GTI” model. We submit printouts dated
September 14th, 2016 of the website and a screenshot as Annex 6 which also shows the history
of the website going back until September 2008. For information about the navigation system software “RNS” of
the Complainant we submit printouts of the Complainant’s websites and as
Annex 7. On the website of the domain an extensive unauthorized use is made of the signs
“Volkswagen” and “RNS” which are also registered trademarks of the Complainant; among others the EU
trademark “RNS” No. 002893105, the German trademark “Volkswagen” No. 621252, the US trademark
“Volkswagen” No. 71665739 and the EU trademark “Volkswagen” No. 000703702; extracts of said trademark
registrations from the database of the relevant trademark office are enclosed as Annex 8.
In order to prevent a short-term transfer of the domain the Complainant has desist from sending a warning letter
to the Respondent in advance; especially as the Respondent has used a privacy service which offers anonymous
domain name registration.
3. Legal background
a) The domain name is identical or confusingly similar to a trademark in which the Complainant has rights
The domain “” is confusingly similar to the trademarks “GTI”, as it consists of the element “gti” and the
generic term “my” which is common for advertising to create a special binding between the sign and the
consumer (cf. WIPO, UDRP Case No. D2016-0425, Comerica Bank v. Will Rote –;
UDRP Case No. D2016-1114, Banque Pictet & Cie SA v. Brian Dyson and David Kalan – The
mere addition of non-distinctive text elements to the Complainant’s trademark constitutes confusing similarity, as
set out in paragraph 4 (a) (i) of the UDNDRP (cf. WIPO, UDRP Case No. D2012-1395, Karen Millen Fashions
Limited v. Akili Heidi –; UDRP Case No. D2012-0783, Belstaff S.R.L. v. Jason Lau
Sharing –; UDRP Case No. D2007-1168, Lime Wire LLC v. David Da
Silva/ –
The presence of the “.com” generic top-level-domain is negligible (cf. WIPO UDRP Case No. D2001-0015,
Telecom Personal v.; UDRP Case No. D2000-1271, Nokia Corp. v. Private). Furthermore, the
trademark “GTI” is well-known and will be associated by significant parts of the public exclusively with the
b) Respondent has no rights or legitimate interests in respect of the domain name
The Respondent has no rights or legitimate interests in respect of the domain “”. The Respondent is
not making non-commercial or fair use of the domain. The Respondent rather uses the domain to offer copyright
infringing software which is intended for the navigation systems used in the cars – inter alia the “GTI” models –
manufactured by the Complainant.
Furthermore, the Respondent is not commonly known as “GTI” and the Respondent is not owner of trademarks
consisting of the word “GTI”. The Complainant has not authorized the Respondent to use the trademark “GTI” or
sell copies of their navigation system software (cf. WIPO, UDRP Case No. D2000-0020, Compagnie de Saint
Gobain v. Com-Union Corp.). The registration of the protected trademarks “GTI” of the Complainant precedes the
registration of the domain “” by 20 years. The Respondent has therefore no prior rights in the disputed
domain. The name or the contact details of the Respondent contain no reference to “GTI”.
Therefore, the burden of proof is on the Respondent to demonstrate that such right or legitimate interest exists at
all (cf. WIPO, UDRP Case No. D2000-1228, Clerical Medical Investment Group Limited v.
c) The domain name was registered and is being used in bad faith
The domain name was registered and is being used in bad faith (Paragraph 4 (a) (iii) of the Uniform Domain
Name Dispute Resolution Policy – UDNDRP).
The registration of a well-known trademark as a domain name is a clear indication of bad faith in itself (cf. WIPO,
UDRP Case No. D2009-0113, The Gap Inc. v. Deng Youqian).
The Respondent was certainly aware of the “GTI” trademarks of the Complainant at the time of registering the
domain name at issue as the offer of the Respondent on their website refers from the outset to the products of
the Complainant (cf. WIPO, UDRP Case No. D2012-2066, Volkswagen AG v. Privacy Protection Services).
Furthermore, the Respondent registered the contested domain primarily for the purpose to attract, for commercial
gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademark “GTI”
as to the source, sponsorship, affiliation, or endorsement of the website and the copyright infringing software on
this website, para 4 (b) (iv) UDNDRP. Using a domain containing the Complaint’s trademark promotes and only
enables the Respondent to offer their copyright infringing software on this website.
There is no other reason for the Respondent to use the trademark “GTI” other than to try to redirect Internet users
who are searching for information or the supply of spare parts and accessories for the products of the
Complainant; especially as the Respondent uses on their domain “” further registered trademarks
“RNS” and “Volkswagen” of the Complainant to promote his copyright infringing software update for the
Complainant’s navigation system.
Finally, the Respondent concealed his identity by using a proxy service which enables holding a domain
anonymously. However, attempts to hide the domain name holder’s true identity indicate bad faith registration
and use of the domain name (cf. WIPO, UDRP Case No. D2000-1273, Pharmacia & Upjohn AB v. Dario H.


7 comments to Volkswagen files complaint over domain name – assistance requested

  • arcadelt

    Classic case of a big company trying to protect it’s copyrights and trademarks. However, while I am not a lawyer, I think you have rights here. Firstly, you should get legal advice. Secondly, you should determine if you are indeed doing anything illegal outside of the domain name dispute – their claim is that you are using “the domain to offer copyright infringing software which is intended for the navigation systems used in the cars”. Thirdly, they may not have full and complete rights to the label “GTI” since Peugeot also use this as a model designator. Finally, if you own or owned a GTI and you were documenting aspects of your ownership, I would have thought the phrase “My GTI” could apply to you contrary to their assertion that you have “no rights or legitimate interests in respect of the domain name”.

  • Maverick

    Thank you for your feedback. On the last point the domain was registered after the purchase of a Golf GTI and has documented the many modifications that I have performed. I have been heavily involved in the GTI community both forums and meets for many years as well.

  • SteveL

    Volkswagen are not the only automotive manufacturer that uses GTI as a variant within it’s range.

    GTI is short for Grand Tourer Injection, a car model variant – but not manufacturer specific, as the following marques also apply GTI to variant’s within their range:

    Maserati 3500 GTI, the first GTI car ever, from 1961
    Peugeot 205 GTI, a famous hot hatch
    Suzuki Swift GTi, Suzuki GTi variant, and
    Volkswagen Golf GTI, a famous hot hatch.

    There is also GTi Engineering, an auto racing team.

    I think Volkswagen’s attack on the site name “gti” may not pass the ‘pub-test’ and could prove to be an interesting case, should Volkswagen turn their attention to Maserati, Peugot and Suzuki.

  • Alex

    BMW tried this with many garages etc when they took over Rover years ago. Everywhere with the word “Mini” in it got a cease and desist letter from BMW’s lawyers. I remember the courts (in the UK anyway) kicking it in to touch and telling BMW not to be so silly. Might be worth looking that up.

  • David Dana

    Best of luck with fighting this. I think that Stevel has a good point about the generic use of the term GTI. Is VW really trying to annoy the very community that buys its cars, particularly as it has been caught out with dieselgate and exaggerating petrol economy figures on other cars.

  • Richard Cooper

    they are more concerned about the RNS updates and are saying copyright infringing software, id take down the links to firmwares but i dont know how or the legality of obtaining them through however you may have. again i would seek legal advice on this but they are saying they have trademarked “RNS” which is the start of the model number.

    the last line about hiding domain registrations just do a whois on and it lists a company, not a person. they are saying its been registered in bad faith but the reality is you are just protecting your own privacy.

    seek legal advice but under no terms hand them the domain. you could offer to sell it to them at an over inflated price that they may happily pay.

    plus note, they lost the trademark to “gti” in a european court

  • Richard Cooper worth a read at all the pointless words VW has trademarked

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