{
    "case_number": "CAC-UDRP-101302",
    "time_of_filling": "2016-09-21 10:13:01",
    "domain_names": [
        "MY-GTI.COM"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Volkswagen AG"
    ],
    "complainant_representative": "Lubberger Lehment ",
    "respondent": [
        "Matthew  McDonald"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant, a German multinational automotive manufacturing company headquartered in Wolfsburg (Germany), 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. The Golf car is Volkswagen's best-selling model and the world's second best-selling car model with more than 29 million built by 2012. \r\n\r\nThe Respondent, Matthew McDonald, supposedly an Australian citizen, is the owner of the disputed domain <my-gti.com>, registered on August 26, 2008, and is involved in the Volkswagen fan community.",
    "other_legal_proceedings": "None",
    "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant submits that it owns registered trademark rights as noted above. He alleges that the trademarks “GTI” and “VOLKSWAGEN” are well-known by significant parts of the public and will be associated with the Complainant exclusively. In the process of its market monitoring activities regarding the fight against piracy, counterfeiting and copyright infringements the Complainant recently became aware of the domain “my-gti.com” registered on August 26, 2008 by the Respondent. \r\n\r\nThe Complainant says that the domain <my-gti.com> is confusingly similar to the trademarks “GTI”, as it consists of the trademark “GTI” and the generic term “MY”, which is common for advertising to create a special binding between the sign and the consumer (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). In this case, says the Complainant, 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 Policy (Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau Sharing, WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva, WIPO Case No. D2007-1168). And the Complainant to add that the presence of the “.com” generic top-level-domain is negligible (Telecom Personal v. maezero.com, WIPO Case No. D2001-0015; Nokia Corp. v. Private, WIPO Case No. D2000-1271).\r\n\r\nThe Complainant states that, since registration, the disputed domain name is used 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. Furthermore, there is an extensive unauthorized use of the registered trademarks “Volkswagen” and “RNS” says the Complainant. Moreover, according to the Complainant the Respondent is not the owner of the “GTI” word trademark and that this trademark precedes the registration of the domain <my-gti.com> by 20 years.\r\n\r\nThe Complainant notes that he has not authorized the Respondent to use the trademark “GTI” or sell copies of their 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.\r\n\r\nAdditionally, the Complainant contends that the Respondent was certainly aware of the “GTI” trademarks of the Complainant at the time of registering the domain name at issue (for instance, in 2008, the year of registration, a picture of the Golf GTI was already displayed) as the offer of the Respondent on their website refers from the outset to the products of the Complainant (Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066). Furthermore, according to the Complainant the registration of a well-known trademark as a domain name is a clear indication of bad faith in itself (The Gap Inc. v. Deng Youqian, WIPO Case No. D2009-0113).\r\n\r\nAlso, according to the Complainant, 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) of the Policy. Finally, the Complainant notes that the Respondent or the person responsible for the content of the website concealed their identity by using a proxy service which enables holding a domain anonymously which indicates bad faith registration and use of the domain name (Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273).\r\n\r\nRESPONDENT:\r\n\r\nThe Respondent makes the following submissions.\r\n\r\nIdentical or Confusingly Similar\r\nThe Respondent alleges that “GTI” is an acronym that is widely used by many car manufacturers and is not exclusive to Volkswagen. \r\n\r\nThe Respondent argues that “GTI” is not distinctive in the general public’s eyes and the letters “GTI” are seen as a description of the technical characteristics of the car or engine. He provided details and excerpts of a decision of the General Court of the Court of Justice of the EU (Volkswagen v. OHIM, Case T-63\/09) where the Court had to decide about the risk of confusion between the trademarks “GTI” and “SWIFT GTI”.\r\n\r\nThe Respondent notes that the Wikipedia entry for “GTI” has six listings for automotive use further supporting that “GTI” is a generic term unless used in conjunction with a car model such as “Swift GTI” or “205 GTI”.\r\n\r\nRights or Legitimate Interests\r\n\r\nThe Respondent claims that he chose the domain <my-gti.com> because he wanted to detail his experience (“MY car”) with the Volkswagen Golf GTI he ordered in January 2008 and was delivered on May 16, 2008. He says that he had always associated the term “GTI” with the French car manufacturer Peugeot, regarded it as a generic name, and denoted a sportier model. After the purchase of the car, the Respondent became heavily involved in both the Volkswagen fan community and in a large number of local meetups, and then decided to setup his own website where he could put information in one place for anyone to access. \r\n\r\nThe Respondent says that the “about page” on <my-gti.com> has stated since at least 2013: “This site has been set-up primarily to document modifications to my car but also to serve as a reference site, where-ever possible the work has been performed on my car and documented from that. There are often many projects on the go, not all get off the ground or are documented here for cost reasons as getting parts in Australia is very expensive compared to the EU”.\r\n\r\nThe Respondent contends that there are links on <my-gti.com> to third party websites that host the firmware which are bug fixes and minor upgrades that have been uploaded by members of the Volkswagen fan community due to the reluctance or refusal of the dealers to assist with usability problems with the head units by updating the firmware. He claims that there is nothing sold on the <my-gti.com> domain. \r\n\r\nThe Respondent finally notes that the Complainant has not provided evidence that the Respondent has derived any revenue from the website.\r\n\r\nRegistered and Used in Bad Faith\r\n\r\nThe Respondent says that the use of the trademarks “Volkswagen”, “RNS”, “VW” and “GTI” are used to identify the model of vehicle or the type of accessory that the article on his website pertains to. According to the Respondent, no use is made of Volkswagen logos on the website nor is there any attempt at misleading visitors. He claims that he recently added a disclaimer to the bottom of every page in order to avoid any confusion between the Complainants and his website.\r\n\r\nThe Respondent claims that there have been over 4800 comments left on the various posts on <my-gti.com> and not one of them has ever mentioned mistaking the site for a Volkswagen AG affiliated website. He added that he is a huge fan of Volkswagen since he became part of the Volkswagen fan community and would not do anything to harm the company. According to the Respondent, the website offers information and help that can only promote the brand.\r\n\r\nThe Respondent also contends that there is no evidence to support the claim from the Complainant that the domain is used to divert people from Volkswagen for commercial gain nor is there anything to support the claim that the domain has disrupted the business of the Complainant. Finally, the Respondent notes that the domain name proxy (privacy) registration is offered standard by Google when you register a domain through them, and the contact has always been available from the website contact form or via email.",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).",
    "no_rights_or_legitimate_interests": "The Complainant has not, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).",
    "bad_faith": "The Complainant has not, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).\r\n\r\n",
    "procedural_factors": "The Complainant as well as the Respondent has submitted several supplemental filings within the course of proceedings. Bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case, the Panel finds submitted supplemental filings admissible for they contain useful explanations. In other words, while rendering its decision the Panel took into consideration the standard documents (i.e. the complaint and the response to the Complaint), as well as all supplemental filings.\r\n\r\nThe Panel took into consideration the standard documents (Complaint and Answer to the Complaint), as well as all supplemental filing. Altough this is not strictly speaking the normal procedure, the Panel is convinced that such supplemental information brought useful explanation, without harming parties right to a fair and equal treatment.",
    "decision": "Rejected",
    "panelists": [
        "Mr. Etienne Wéry"
    ],
    "date_of_panel_decision": "2016-11-02 00:00:00",
    "informal_english_translation": "Volkswagen AG is the owner of the “VOLKSWAGEN” trademark, registered extensively, either on its own or in combination with other terms and designs, especially the “VW” logo (e.g. EU trademark No. 000703703, German trademark No. 621252, and the US trademark No. 71665739); details and official printouts of which are set out in and annexed to the Complaint filed by the Complainant.\r\n\r\nVolkswagen AG is also the owner of other trademarks such as 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. Volkswagen AG has also registered the following word trademarks: “VW” (EU trademark No. 001354216, in classes 4, 7, 9, 12, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, and 42), “GOLF” (EU trademark No. 000751909, in classes 4, 7, 12, 27, 28, and 37), “GOLF GTI” (EU trademark No. 829749160, in class 12), and “RNS” (EU trademark No. 002893105, in class 9).",
    "decision_domains": {
        "MY-GTI.COM": "REJECTED"
    },
    "panelist": null,
    "panellists_text": null
}