Latvia’s ghost lane?

Volkswagen refiles complaint over my-gti.com domain name

After losing the previous case Volkswagen has once again refiled a similar complaint in the Czech Arbitration Court seeking the transfer of the my-gti.com and another related unused domain. There has been zero communication from Volkswagen or their legal representatives before or after the previous case.

Update: Volkswagen lost the latest case, the decision can be found here.

Please post a link on other automotive news sites and forums and anywhere else that is relevant as support and advice is needed to once again prepare the response and hopefully some publicity will help stop Volkswagen from trying to shut down legitimate fan sites.  

Details

Other proceedings
Insert any information you have regarding other legal proceedings, pending or decided, which relate to the
disputed domain name.
Panel Decision of November 2nd, 2016 Case No. 101302 by Mr. Etienne Wéry who rejected then complaint.
But as stated in the decision of Case No.101302, the Panel would have no difficulty in concluding that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv)
of the Policy if there is anything conclusive before the Panel to suggest that the Respondent’s purpose was commercial.

In this refiled Complaint, the commercial purpose on the part of the Respondent is demonstrated. Therefore, since new evidence has come to light which shows that the Respondent’s intent behind the registration of the
domain name does not correspond to that which the Respondent claimed in Case No. 101302, the complaint had to be refiled.

Remedies sought
Indicate the remedies sought for each disputed domain name:
The domain mygti.
com and the domain vwgolf.tech is to be transfered to the Complainant, the Volkswagen
AG.
Factual and Legal Grounds
Factual Grounds
Legal Grounds
I. Legal basis
Please explain your arguments in detail below.
Factual and Legal Background

1. Identification of Rights
Volkswagen AG is the owner of the “VOLKSWAGEN” as well as “VW” trademark which is registered extensively:
EUTM 000703702 “VOLKSWAGEN”, German TM No. 621252 “VOLKSWAGEN” and the US TM No. 71665739
“VOLKSWAGEN” as well as EUTM 1272004 “VW”? IR 1272004 “VW” and German TM 682214 “VW” with
priority from the years 1952 and 2014 at the latest? details and official printouts of these Volkswagen AG’s
registrations are enclosed as Annex 1.
Volkswagen AG is also the owner of the IR “GTI” (No. 717592), the German TM “GTI” (No. 39406386), the US
TM “GTI” (No. 1540381) the EUTM “Golf GTI” 0968810 and the EUTM “RNS” 002893105 (in class 9) as well
as EUTM “Golf” 00751909, IR “Golf” 403411 and German TM “Golf” 907094, with priority from the years 1999,
1995, 2008, 2002, 1998 and 1973 as shown in the printouts of these trademarks from the official registries
enclosed as Annex 2.

2. Factual Background
a)
The Complainant, a German multinational automotive manufacturing company with its head-quarter in Wolfsburg (Germany), is the holding company of the Volkswagen Group, which was founded in 1937. The Volkswagen Group is one of the world’s leading automobile manufacturers and the largest in Europe and has been manufacturing cars, other vehicles and vehicle accessories since its establishment. The Golf is Volkswagen’s bestselling
model and the world’s second bestselling car with more than 29 million having been built by 2012 (Annex 3). Already in 1976 the Complainant launched the especially powerful and sporty Golf GTI which, over the years, has become one of the most renowned versions of the Golf (Annex 4).
The GTI and other Golf cars are equipped with the copyright protected navigation system software “RNS”
(Annex 5). Distribution and any kind of duplication of the RNS software without the consent of the Complainant is prohibited on a worldwide scale by the respective national Copyright Laws.
b)
The Respondent, X X, allegedly an Australian citizen.

He is the owner of the disputed domain , registered on August 26, 2008. The Respondent tried to conceal his identity by initially using a proxy service which enables the holding of a domain anonymously as shown by a printout of the website www.whois.icann.org dated 14.09.2016 enclosed as Annex 6. This indicates the registration and use of a domain name in bad faith (Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273).

The Respondent’s site is active. The entry page of the site consists nearly exclusively of possibilities for the downloading of copyright-protected RNS software, the rights of which are owned by the Complainant, which is proven by extracts of the website and the pages following the download links in Annex 7.

Furthermore, it is clear from the content of the site that the domain name “my-gti.com” is exclusively used as a reference to the cars and products of the Complainant because there is no content which refers to any other car producer such as Peugeot or Suzuki.

The purpose of the Respondent’s use of the domain name “my-gti.com” is commercial. The website advertises the online shops www.carsystem.pl and www.samstagsales.com and offers a 10% discount if customers enter into the order description on the website “my-GTI.com” (Annex 8). Therefore, the contested domain “my-gti.com” is used for the purpose of commercial promotion. It is evident that the Respondent receives a revenue from the ownership of both online shops. Additionally, revenues derive from the Respondent’s request for donations (Annex 9).

The Respondent cannot claim that his website is merely a fan site which “…has been set up primarily to document modifications to my car but also to serve as a reference site, whereever possible the work has been performed on my car and documented from that” as he ex-plains on the “About” page. The content of the site does not refer to the Respondent’s car and not even to Golf GTI cars in general. Instead it is a professional compilation of information and services for all kind of Volkswagen models such as Golf, Scirocco, Tiguan, Jetta, Passat (Annex 10). In its overall impression, the site appears to be an authorized website of the Volkswagen Group or one of its authorized retailers.

A further proof that the Respondent did not set up the domain my-gti.com as innocently as he claims is, that he registered a further (also contested) domain containing solely trademarks of the Complainant: vwgolf.tech. Furthermore, the Respondent tried to conceal his identity by using a proxy service which enables the holding of a domain anonymously also with this domain as shown by a printout of the website www.domains.get.tech/domain-registration/domain-wh ois-lookup.php enclosed as Annex 11. In Annex 12 we enclose a Reverse Whois search conducted by the Complainant that revealed that the Respondent is the owner also of this disputed domain.

The domain vwgolf.tech is currently not used as shown by a screenshot of this site enclosed as Annex 13.

3. Legal Background

a) my-gti.com

aa)
The domain name is confusingly similar to a trademark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy CAC case No. 101302):

The trademarks “GTI”, “VOLKSWAGEN” and “RNS” are well-known by significant parts of the public and will be associated with the Complainant exclusively.

The disputed domain name my-gti.com incorporates the Complainant’s trademarks “GTI” in its entirety and differs only in its inclusion of the descriptive, generic word “my”, in the hyphen between “my” and “GTI”, and in the non-distinctive generic Top-Level Domain (gTLD) extension “.com”.

The hyphen is a non-distinctive element which serves only to represent the natural space be-tween the two words “my” and “GTI”, which cannot be represented in a domain name except through a device such as a hyphen or an underscore.
The additional letters “my” do not detract from the distinctiveness of the “GTI” trademark. The generic term “MY” is common for advertising to create a special link between the sign and the consumer. Numerous UDRP decisions have established that adding a generic to a complainant’s mark does not influence the confusing similarity between a trademark and a domain name (Comerica Bank v. Will Rote, WIPO Case No. D2016-0425; Banque Pictet & Cie SA v. Brian Dyson and David Kalan, WIPO Case No. D2016-1114).
Finally, the gTLD extension “.com” is not typically to be taken into consideration when examining the identity or confusing similarity between a complainant’s trademark and a disputed domain name (Accor v. Noldc Inc., WIPO Case No. D2005-0016). The adjunction of the gTLD “.com” is irrelevant as it is well established that it is insufficient to avoid a finding of confusing similarity (L’Oréal v. Tina Smith, WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
The disputed domain name is therefore confusingly similar to a trademark to which the Complainant has rights.

bb)
The Respondent has no rights or legitimation interest in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy:

Since registration, the disputed domain name has been used for the distribution and duplication of copyright-infringing software updates for the navigation system “RNS” which is used in the “GTI” model and other cars of the Complainant. Furthermore, there is extensive, unauthorized use of the registered trademarks “Volkswagen” and “RNS”. Moreover, the Respondent is not the owner of the “GTI” word trademark and this trademark precedes the registration of the domain by 20 years.

The Complainant has not authorized the Respondent to use the trademark “GTI” or distribute copies, of any kind, of this navigation system software (Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020) and therefore has no prior rights in the disputed domain.

The Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the “GTI” trademark or to register the disputed domain name containing the Complainant’s trademark.

The Complainant registered and began using the “GTI” trademark well before the disputed domain name was registered.

The Respondent has incorporated a picture of the Golf “GTI” into his website, with Com-plainant’s branded products.

The Respondent uses the domain name for a website which exclusively re-fers to cars and products of the Complainant.

The Respondent does not want to detail his experience with his Volkswagen Golf GTI be-cause most of the site content refers generally to other VW models than the GTI owned by the Respondent.

The website contains links to a cloud where the Respondent hosts the illegal firmware.

The Respondent is generating income via this website and has commercial intentions (this can be seen from the advertisements for two different web-shops and the fact that the Re-spondent is collecting donations).

The site provides information that could have an impact on the commercial activity of the Complainant (distribution of copyright-protected software exclusively sold by the Com-plainant).

Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy.

cc)
The domain name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy:

The Respondent registered and has been using the disputed domain name in bad faith. According to paragraph 4(b)(iii) of the Policy, a panel may find both registration and use in bad faith if there is evidence that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on it.

The Respondent registered the domain name with knowledge of the Complainant’s well-known trademark and with a view to attracting internet users to his website by way of the Complainant’s trademark and the Respondent’s purpose in attracting these internet users to his website was commercial.

The Respondent knew of the Complainant and the Complainant’s “GTI” trademark registrations (in the United States of America, Europe, and elsewhere throughout the world) at the time he registered the disputed domain name. It is highly implausible that the Respondent was ignorant of the Complainant’s brand when he registered the disputed domain name. In 2008 the GTI had been on the market for nearly 30 years and the Respondent himself was using the term in order to identify his own Golf GTI.
The Respondent’s site is not a mere fan site.
As stated in Case No.101302 the Panel would have no difficulty in concluding that the disputed domain name was registered and is being used in bad faith within the meaning of para-graph 4(b)(iii) of the Policy if there is anything conclusive before the Panel to suggest that the Respondent’s purpose was commercial.
In this re-filed Complaint of Case No.101302, the commercial purpose on the part of the Respondent is demonstrated by direct links to two different web-shops and the possibility to get a discount there if “my-GTI.com” is entered in the order description.

The Respondent is obviously benefiting from these advertisements. Furthermore, the Respondent’s site provides information that could have an impact on the commercial activity of the Complainant. The legality of the offer has a great impact on the alleged good/bad faith.

b) vwgolf.tech

aa)
The domain name is confusingly similar to a trademark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy CAC case No. 101302):

The trademarks “VW” and “Golf” are well-known by significant parts of the public and will be associated with the Complainant and its car, the VW Golf, exclusively.

The disputed domain name vwgolf.tech incorporates the Complainant’s trademarks “VW” and “Golf” in its entirety and differs only in the non-distinctive generic extension “.tech”.

Generic extensions are not typically to be taken into consideration when examining the identity or confusing similarity between a complainant’s trademark and a disputed domain name (Accor v. Noldc Inc., WIPO Case No. D2005-0016). The adjunction of such extensions is irrelevant as it is well established that it is insufficient to avoid a finding of confusing similarity (L’Oréal v. Tina Smith, WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
The disputed domain name is therefore confusingly similar to trademarks to which the Complainant has rights.

bb)
The Respondent has no rights or legitimation interest in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy:

The Respondent is not the owner of the “VW” and ”Golf” word trademarks and this trademarks precedes the registration of the domain vwgolf.tech in 2016.

The Complainant has not authorized the Respondent to use the trademarks and therefore he has no prior rights in the disputed domain.

The Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the trademarks or to register the disputed domain name containing the Complainant’s trademarks.

The Complainant registered and began using the “VW” and “Golf” trademark well before the disputed domain name was registered.

cc)
The domain name has been registered and is used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy:

The Respondent registered the disputed domain name in bad faith. The Respondent registered the domain name with knowledge of the Complainant’s well-known trademarks. In 2016 the VW Golf had been on the market for nearly 40 years and the Respondent himself was using the term “GTI” in order to identify his own Golf GTI on his website my-gti.com since 2008 and uses this site with a commercial purpose.

According to numerous Panel decisions, the fact that a domain is currently held passively (i.e. resolves to a website that displays no content) including the Registrant’s use of a privacy service in combination with provision of incomplete contact information to such service and concealment of its identity, bring to the conclusion that the domain has been registered and is being used in bad faith (Case No. 101452, 101459, 101457, 101414, 101442 amongst others).

In the decision Case No.101459 the Panel further notes, that the undeveloped use of the website at the domain name which incorporates the Complainant’s trademarks in its entirety indicates that the Respondent possibly registered the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of the Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per para 4 (b)(iv) of the Policy.

Since new evidence has come to light which shows that the Respondent’s intent behind the registration of the domain name does not correspond to that which the Respondent claimed in Case No. 101302, the complaint had to be re-filed.

5 comments to Volkswagen refiles complaint over my-gti.com domain name

  • arcadelt

    They are a big company with deep pockets. It seems, unfortunately, that they will use each arbitration event to determine your arguments and take the decisions of the panel so they can chip away until they can sweep away any points in law until there is the panel can only rule in their favour. They have lawyers on staff or contract, so this probably cost them nothing more that the opportunity for the lawyers to work on another case. That said, perhaps they might settle through the purchase of the domain name and some compensation if that was put to them. I’m afraid that unless you can match them in time, effort and expenditure I feel the determination will eventually fall their way, as so many other big-guy vs little-guy cases do.

    By the way, have you informed the Australian and/or International press of what is going on? If nothing else, it is a good story to highlight how big corporations operate to press their claims.

    • Maverick

      Thanks for the response, you’re right that they will keep abusing the system to either wear me down or until they win.

      I wouldn’t be interested in selling the domain to them or anyone else as I have legitimate right to use the domain.

      The media aspect I hadn’t considered but is a good point given that Volkswagen filed again when there has been no change in use of the domain name which does raise the question of harassment or bullying by Volkswagen. Most of the new points they have raised are incorrect.
      (aside from them wanting to claim the vwgolf.tech domain that I had plans to use and acquired just before they filed the last case)

  • benough

    What a bunch of cunce

  • Brent

    Take it to the media. With all the bad press VW has gotten with the diesel gate scandal I’m sure people would happily write an article about VW treating you like this. Also you need to reach out to right to repair folks or possibly the EEF and see if they are willing to put out a press release for you. Going after this site is akin to slapping your biggest fans right in the face. People who work on their cars themselves tend to almost develop a relationship with it. Why would VW go after the most die hard fans?

    • Maverick

      Thanks Brent,
      I’m finalising my response at the moment and will update this site as this progresses. The decision won’t be known for probably four weeks so fingers crossed but I do wonder if Volkswagen will file another claim soon after if they lose.

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