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question I need advice for domain trademark issue.

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M0rd0r

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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
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
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.

No, When I was saying a toy project I meant to develop a website on my free time as a hobbie related to wasps. I speak Catalan and I liked the name, that's all.

But it is true that Vespa is really known in motorcycle industry so I had to pay more attention when I registered this name.
 
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Sure, Do you know if I need a lawyer if this guy wants to take me to the court, or is it between the register and Vespa Trademark?

You don't need to pay any fees normaly and you don't need a Lawyer because you will lose in all case, And the one who will pay fee is Piaggio, They need to pay about $1500 to fill a case at Wipo.int + Lawyer fee

The court will be Online at WIPO.

And The Worst case scenario is giving them the domain for free after the final court decision, But if you have some history of registering vespa domains for profit they may claim compensation if domains causes damage for their Business reputation...
 
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You don't need to pay any fees normaly and you don't need a Lawyer because you will lose in all case, And the one who will pay fee is Piaggio, They need to pay about $1500 to fill a case at Wipo.int + Lawyer fee

The court will be Online at WIPO.

And The Worst case scenario is giving them the domain for free after the final court decision, But if you have some history of registering vespa domains for profit they may ask for Compensation or something like that.

"While the UDRP is mandatory for domain holders, it is an optional procedure for mark holders."

https://revisionlegal.com/internet-law/the-udrp-process/
 
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You don't need to pay any fees normaly and you don't need a Lawyer because you will lose in all case, And the one who will pay fee is Piaggio, They need to pay about $1500 to fill a case at Wipo.int + Lawyer fee

The court will be Online at WIPO.

And The Worst case scenario is giving them the domain for free after the final court decision, But if you have some history of registering vespa domains for profit they may claim compensation if domains causes damage for their Business reputation...

Uou! Thanks for the information.
 
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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.

Once a UDRP panel took away VisitQatar.com from the registrant.
Last week it was reported that ARM.co was given to ARM.com (the parked page had ppc links)
https://domaininvesting.com/tough-loss-on-arm-co-udrp/
You can read UDRP decisions online, they normally do not accept any "planning to use argument". If the site was up and running as per your idea, you might have been in a better position.
But if they decided to go to court, things could get even worse.
https://www.trademarksandbrandsonline.com/news/us-court-fines-cybersquatter-1-2-million-4599
Just my Opinion:Not Legal advice
 
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I see it like this.
Most companies think that one word belongs to them and anyone is forbidden from using it, if they really cared they should register all TLD's, ccTLDS etc related to Vespa.
This Vespa word is even familiar to me, and what now, what if i want to make a game named Vespa which eats bugs, what i must pray to God Vespa Trademark?
Trademark crap, if i hold such domains I invite this d****s to come and beg me to sell to them because I m not going to hand them free of charge any of my hand registerted domains :D, they should have think before with their small peanut brain.
 
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Your probably best walking away. Maybe you weren't thinking of the brand when you purchased it but 99.99% of people will have a hard time believing you. Not worth the headache.
 
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Vespa is a dictionary word in Catalan (my language), it means wasp. This is the reason why I registered the name:

Oh yeah? And what does "fun" mean in Catalan?
 
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Tell them you have a vespa at home

Hope everything will be fine.
 
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There is no way you will win the case. If you ask anybody in the world about the word "vespa" they will give reference about vespa vehicles. Better gracefully close the matter. Cheers!
 
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Tell them to stop interfering with your scientific study on the sexual behavior of wasps. That should be fun enough for any ambulance chasing lawyers.
 
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