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I need advice for domain trademark issue.

Labeled as question in Legal Discussion, started by M0rd0r, Jun 14, 2021

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  1. M0rd0r

    M0rd0r Established Member

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    Hi domain wizards!

    I have just received the following email and I would like to have your advice, because I don't know what to do in this case, the domain name is vespa.fun.

    This message has been forwarded to you as part of your domain registration services. All content below was provided by the sender.

    Sender name: Luca Barbero
    Sender email: [email protected]
    Subject: RE: Infringing registration and use of the domain name vespa.fun
    Body:
    Dear Sirs,

    1. We convey this cease and desist demand letter in the name and on behalf of Piaggio & C. S.p.A., headquartered at Viale Rinaldo Piaggio, 25 - 56025 Pontedera, Pisa (Italy).
    2. As you are certainly aware, the Piaggio Group is the largest European manufacturer of two-wheeled motor vehicles and one of the world's leaders in its sector. Piaggio & C. S.p.A. is the owner, amongst others, of the trademark VESPA, with registrations in Italy and in many other countries. In this regard, we cite inter alia, for your ease of reference, the following Trademark Registrations:
     Italian Trademark Registration No. 0000927192 of April 16, 2004 (word mark) in classes 9, 18 and 25;
     European Trademark Registrations Nos. 001219963 (word mark) of October 9, 2000 in classes 14, 16 and 28, 010821775 (word mark) of September 14, 2012 in class 25;
     International Trademark Registration Nos. 137197 of June 23, 1948 in classes 6 and 12; 437943 (word mark) of April 20, 1978 in class 12; 598112 (word mark) of February 10, 1993 in classes 9, 18 and 25.
    3. Please be advised that Piaggio & C. S.p.A. has also secured registrations in many other jurisdictions, including but not limited to, Australia, Benelux, Georgia, Germany, Hong Kong, Japan, India, Lithuania, Russian Federation, Singapore, South Korea, United Kingdom and United States of America; the trademark VESPA is certainly well-known and it has become the icon for mobility on two wheels in the world.

    4. Our client has become aware that you registered the domain name vespa.fun without any prima facie rights or legitimate interests on said distinctive sign. We note that your registration of a domain name identical to our client’s trademark constitutes a clear infringement of our client’s trademark rights due to the evident risk of confusion with the subject domain name. Please be also advised that Courts in different jurisdiction and Arbitration Panels repeatedly stated that registering a third party’s trademark as a domain name (the so called “domain name grabbing” or “abusive registration of a domain name”) is to be considered a violation of intellectual property rights, and, in some instances, as well an act of unfair competition.

    5. Furthermore, we have ascertained that you are redirecting the domain name vespa.fun to a website publishing a notice that vespa.fun is offered for sale for a sum well-over than the mere out-of-pocket costs.


    6. In view of the above, we hereby request that you:

    a) immediately cease any use of the domain name vespa.fun;

    b) confirm, in writing to our attention, your decision to immediately transfer the above-captioned domain name, free of any charges, to our client;

    c) undertake not to register and/or use the designation VESPA as a trademark, as a domain name, as a trade name, business sign or, more generally, as a distinctive sign.

    7. We are confident that you will timely comply with the demands of Piaggio & C. S.p.A. set forth herein. However, please be advised that, in absence of your compliance with our client’s requests set forth supra in Paragraph 6 or your detailed reply on the merits of the present issue, within

    7 days

    from receipt of this letter, our client may consider enforcing its intellectual property rights, by any means and in any venue deemed appropriate, also with the assistance of our local correspondents in your country. We note that this letter is written without prejudice to, or waiver of, Piaggio & C. S.p.A’s rights and remedies worldwide, all of which are hereby expressly reserved.

    Sincerely,
    STUDIO BARBERO


    Any advice?
    Thanks in advance
     
    Last edited: Jun 14, 2021
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  2. biggie

    biggie GreenFriendly.com VIP ★★★★★★★★★★

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    Hi

    you can try to delete the domain or have them initiate the transfer.
    because it's not worth fighting for.

    imo....
     
  3. MasterOfMyDomains

    MasterOfMyDomains Top Contributor VIP ★★★★★★★★★★

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    Tell them its a common name found on facebook, linkedin and 411.com
    You are not infringing on any trademarks.
    As Biggie says its not worth much
     
    Last edited: Jun 14, 2021
  4. Charybdis

    Charybdis Established Member

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    You shouldn't have purchased this domain name, just enter "vespa" into a trademark search engine, there are a lot of live trademarks.

    Search on Google for vespa, you will see results only about the motor vehicle.

    This is a well-known motor vehicle brand, I don't know what did you think when you purchased this domain name?
     
  5. coolhands

    coolhands Established Member

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    Lowered the price from €4.999 to $100. Because you already own a trademarked domain, You have two Options: sell the domain for cheap or Transfer the domain for FREE.

    And the Bonus option is to remove the domain from sale from DAN and setup a blog about Vespa scooter review.
     
  6. M0rd0r

    M0rd0r Established Member

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    Hi Carybdis,

    Vespa is a dictionary word in Catalan (my language), it means wasp. This is the reason why I registered the name:
    https://www.enciclopedia.cat/ec-gec-0150502.xml

    Thanks for your response.
     
  7. M0rd0r

    M0rd0r Established Member

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    Thanks for your response biggie :)
     
  8. M0rd0r

    M0rd0r Established Member

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    Yes, I think so. Do you know which is the worst case?

    If this man wants to go to the court I have to pay something?

    Thanks in advance.
     
  9. M0rd0r

    M0rd0r Established Member

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    Love the bonus option!
     
  10. coolhands

    coolhands Established Member

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  11. Charybdis

    Charybdis Established Member

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    But it's a well-known brand. Your domain name could be easily confused with this well-known brand.

    Search on Google for vespa, what do you see?
     
  12. jhm

    jhm Glazed

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    I was wanting to launch the VESPA App (vespa.app) ...selling shoes for big people

    Damn you Piaggio
     
  13. Future Sensors

    Future Sensors 78% of human domainers will be replaced by robots Gold Account

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    Barcelona has some good Intellectual Property lawyers. It may be possible that you did not register / use this name in bad faith. If you really like to defend this name (and spend accordingly), please contact them for legal advice. Otherwise, just follow the advice @biggie gave you.
     
  14. M0rd0r

    M0rd0r Established Member

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  15. jhm

    jhm Glazed

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    Putting my jokes aside, it really isn't worth the headache ...let it go (in my opinion)
     
  16. M0rd0r

    M0rd0r Established Member

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    Thanks for your advice jhm :)
     
  17. Future Sensors

    Future Sensors 78% of human domainers will be replaced by robots Gold Account

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    Please beware that this thread is already archived in Google, and can be found easily.
     
  18. M0rd0r

    M0rd0r Established Member

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    I really like this name, I bought it in order to develop a toy project, but I did not have time so I decided to sell it. But, the key words here are, as you say, "spend accordingly".
     
  19. Charybdis

    Charybdis Established Member

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    And who would buy this domain anyway? Don't assume that buyers are stupid. Buyers will research the trademarks and they will see a lot of live trademarks in many different countries.

    As a buyer, I would never buy such a name which is obviously a trademark of a large company.
     
  20. M0rd0r

    M0rd0r Established Member

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    Those are your words not mine. I never assume a buyer is stupid. I really like this name and this word, am I stupid? Maybe.

    But I never assume that a buyer interested in one of my names is stupid.

    BTW, thanks for your advice.
     
  21. biggie

    biggie GreenFriendly.com VIP ★★★★★★★★★★

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    Hi

    i guess buying a .fun domain, wasn't as much fun, as you thought?

    it's funny, that you say you didn't have time to develop it, as a toy project.
    and now, you got time , 7 days, to think about the repercussions of your actions and what you're going to do about it.



    imo....
     
  22. VadimK Iberica

    VadimK Iberica Established Member

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    Hola desde Barcelona :)

    I agree with @biggie I think it's gonna be extremely hard for you to back up the point that this domain has nothing to do with the vespa trademark. You bought it, you want to sell it...
    And exactly, it simply is not worth it. Give them domain and save yourselves troubles...
    But just in case you decide to fight - pm me the outcome after this, would be extremely interesting to know how they proceed in case someone refuse to comply with their demands.
     
  23. Mike Goodman

    Mike Goodman Established Member

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    That trademark was issued in 1948. You don't have the excuse that you had the name before them. Your only way out and keeping the name is to use it for something entirely different for a significant period of time before attempting to sell it.

    But unless you can come up with serious financial backing about the only thing I could come up with is something about wasps and written in either Catalan or Spanish. Is it really worth the effort?

    I'd cancel it at the registrar and tell Piaggio it is now available there for them to register should they wish to do so. At least they'd then have to pay something for it.
     
  24. Future Sensors

    Future Sensors 78% of human domainers will be replaced by robots Gold Account

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    I'm always fascinated by the wording and order of these demands. The first demand is often to "immediately cease any use of the domain name", which technically includes the immediate cancellation of the domain. Then it continues with a second demand, that you "immediately transfer the domain name to the client"...
     
  25. Charybdis

    Charybdis Established Member

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    Do you mean a website about toys?

    These domains are currently available for hand-registration (but check the trademarks before registering any domain, lol, I haven't checked the trademarks for you):

    toyarrow.com
    toybold.com
    toycanyon.com
    toycrown.com
    toyfalcon.com
    toyeagle.com
    toyfic.com
    toydolphin.com
    toymont.com
    toyoxa.com
    toypurple.com
    toypillar.com

    I think you don't need the headache. Try to sell domains which are free from trademark infringement.
     

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