Volkswagen AG has filed a complaint in the Czech Arbitration Court (CAC) and wants the my-gti.com 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 my-gti.com loses and the site is shut down temporarily updates will be provided at www.flusen.tech.
Details of the complaint are below
Factual and Legal Grounds
I. Protected rights relied on by the Complainant
a. Registered trade/service mark
i. Registered in one country
ii. Registered in several countries
b. Well-known/famous mark
II. Complainant’s Rights
b. Are Complainant’s rights valid in the territory where domain name holder is established?
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 www.my-gti.com that was
registered on August 26th, 2008 by the Respondent. A print out of the website www.whois.icann.org 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 www.my-gti.com 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 volkswagen.de and volkswagen.com as
Annex 7. On the website of the domain www.my-gti.com 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 “my-gti.com” 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 – my-comerica-alerts.com;
UDRP Case No. D2016-1114, Banque Pictet & Cie SA v. Brian Dyson and David Kalan – mypictet.com). 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 – karenmillenoutlet-australia.com; UDRP Case No. D2012-0783, Belstaff S.R.L. v. Jason Lau
Sharing – belstaffjacken-outlet.info; UDRP Case No. D2007-1168, Lime Wire LLC v. David Da
Silva/Contactprivacy.com – downloadlimewirenow.com).
The presence of the “.com” generic top-level-domain is negligible (cf. WIPO UDRP Case No. D2001-0015,
Telecom Personal v. maezero.com; 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 “my-gti.com”. 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 “my-gti.com” 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. Clericalmedical.com).
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 “my-gti.com” 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.