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Offline lotusman


  • Joined: Jul 2009

  • Location:
  • Drives:
Hi
I have just joined this site tonight, I have received an identical letter today from Studio Barbero, I own the domain ferrarioccasions.co.uk and they have asked for my domain for free and a 1000 euros. The letters are worded identical which makes me believe these are sent out to anyone using the ferrari name.
I used to use my Mondial Quattrovalve Cabriolet for weddings hence the occasions name. Sadly the car caught fire 3 weeks after starting the business and i never replaced it. This was last November, the website was running until tonight but I have now closed it down.
Did you get any further letters from this domain company as they have given me 7 days?
I did reply to them by e-mail tonight offering my apologies and the offer of my now redundant domain name.
Thanks for any help you can offer in advance!!
Dave



Offline uzz32soarer

  • Moustache Champion
  • How the moustache was invented.....go the growl!

  • Joined: Mar 2007

  • Drives: 1988 Testarossa, 1974 DeTomaso Pantera, 1956 T-Bird convertible.
  • Location: Wantirna, VIC.
  • Name: Rob Hayden
Hi Dave,

Iggy helped me out and I sent them back a letter, basically telling them to piss up a rope. I haven't heard anything back at all.

Another bloke in Queensland who complies Ferrari's in Oz, also got a letter and replied in kind as I did. Nothing happened there until this week when he got a follow up letter.

Personally I wouldn't stress about it, or cave to their demands.



Offline lotusman


  • Joined: Jul 2009

  • Location:
  • Drives:
Thanks Rob
I will be taking legal advice and look for any other people who have had dealings with these people.
Were the demands the same in the other guys second letter?
Stuff like this puts me off Ferrari for life.....



Offline uzz32soarer

  • Moustache Champion
  • How the moustache was invented.....go the growl!

  • Joined: Mar 2007

  • Drives: 1988 Testarossa, 1974 DeTomaso Pantera, 1956 T-Bird convertible.
  • Location: Wantirna, VIC.
  • Name: Rob Hayden
Yep, the first letter was worded excatly the same.

Although the second letter that came this week was a bit different. Here's the guts of it. Now I didn't get this because I replied but maybe the other bloke didn't reply at all, so they are having another go. To me it seems like this company are basically 'ambulance chasers' trying to drum up business for themselves.

Dear Sirs,
 
1. We have not yet received any reply from you regarding our cease and desist letter on  the domain name <ferraricomplianceaust.com>
 
2. Please be advised that we will soon meet our client Ferrari Spa at its legal headquarters in Maranello and  we will evaluate  to proceed against the current holder of the domain name with the further steps – including legal actions-   necessary to recover it.
 
3. In light of the above, please provide us – as an evidence that you are acting in good faith - with the authorisation code necessary to the transfer of the domain name to Ferrari SpA and we will take care of the technical procedure of transfer.



Offline lotusman


  • Joined: Jul 2009

  • Location:
  • Drives:
Cheeky or what!
I am liking these guys less by the minute.
Thanks again



Offline AshSimmonds

  • Geekitecht

  • Joined: Feb 2006

  • Drives: GF's shitbox :(
  • Location: Adelayed
  • Name: Humble Narrator
  • www: AshSimmonds.com



Offline uzz32soarer

  • Moustache Champion
  • How the moustache was invented.....go the growl!

  • Joined: Mar 2007

  • Drives: 1988 Testarossa, 1974 DeTomaso Pantera, 1956 T-Bird convertible.
  • Location: Wantirna, VIC.
  • Name: Rob Hayden
Well a lot of water has passed under the bridge and I haven't heard a thing since responding with the letter in 2009.

This morning I get another letter from the same Studio Barbero:

Dear Sirs,

1.  In light of the renewed interest of our client for the domain name <ferrariaustralia.com>, we acknowledge receipt of your email below. In your communication you asked

(i)  for us to “supply the exact Trademarks and other Registrations that apply to the Australian jurisdiction”;

(ii)  for us to demonstrate your breach of Ferrari S.p.A.’s Intellectual Property Rights, pursuant the ICANN UDRP policy; and

(iii)  to provide the proof that Ferrari S.p.A. has entrusted the matter with us.

2.  With reference to point (i), please be advised that you can also find all the Trademarks registered and valid in Australia through the Australian Trademarks Office database, which can be found at http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start. As you will see, 86 search results will come out and the greatest part is registered by our client.

3.  As you have stated in your letter, according to the ICANN UDRP procedure, three are the requirements to be satisfied in order for the Registered Trademark owner to have the “grabbed” domain name transferred: identity or similarity between the registered trademark and the domain name, legitimate interest and bad faith of the Registrant. Please, be advised that, pursuant to the WIPO jurisprudence on domain names registration and transfer, the combination of the full wordmark “FERRARI” followed by a geographical indication (in this case “Australia”) does not at all exclude confusing similarity.

4.  Moreover Ferrari is a certainly well-known mark all over the world. As you certainly are fully aware, well-known marks can profit from a deeper protection if confronted with other less notorious trademarks. We also note that Ferrari S.p.A. has never authorized you to register this domain name, confusingly similar to its trademark, neither your surname is identical to the wordmark, thus there is no prima facie legitimate interest for you to register the above captioned domain name and certifies you were aware of the Ferrari Trademarks at the moment of the registration.

5.  Attached please find a copy of the Power of Attorney signed by the actual Ferrari S.p.A. Head of Legal Department, which certifies that we are acting on behalf of Ferrari S.p.A.

In light of the fact that we have addressed all your requests, we trust that you will comply with our  requests. Notwithstanding the disclaimer that you have added after our Cease and Desist Letter, your use of the domain name is unlawful.
 
Kind regards,

STUDIO BARBERO



Offline uzz32soarer

  • Moustache Champion
  • How the moustache was invented.....go the growl!

  • Joined: Mar 2007

  • Drives: 1988 Testarossa, 1974 DeTomaso Pantera, 1956 T-Bird convertible.
  • Location: Wantirna, VIC.
  • Name: Rob Hayden
As a point of interest, I followed the link below and punched in Ferrari to the search engine there. Sure enough 86 examples of Ferrari trademarked in Oz.

Some for Dianna Ferrari clothing, and others for Ferrari Formal Hire. Also Agostino Ferrari SpA who manufacture furniture hardware, and F.LLI Ferrari Corporation S.p.A. who make cranes and hoists, Ferrari F.lli Lunelli SpA who make wine in Italy, and a classic, Ferrari Mowers registered to a bloke in Wagga Wagga and also a cabinet maker in Perth named Peter Ferrari.

The balance were for Ferrari S.p.A. 60 out of the 86 trademarks registered in Australia.

Most of the trademarks listed there diagrammatically display the variations on the Ferrari script, logo, or cavalino rampante.

Of the 60 trademarks, none actually just say the word Ferrari! They all have to be in script or logo variations.

Naturally you cannot trademark a word, even if it is the surname of the founder, or there would be issues. I'm sure that Mr. Ferrari who makes wine in Italy, or Mr. Ferrari making lawnmowers in Wagga would have an issue if Ferrari S.p.A. decided that they owned ALL rights to that surname!

It's certainly an interesting debate.

If Ferrari S.p.A. wanted the domain name for themselves because they didn't register it due to some over sight, then they could have always contacted me and offered to purchase it.

I'm not deriving any profit from the name. I'm not advertising any product belonging to Ferrari S.p.A. It's a private website offering a free forum service to invited members, and is primarily used to post technical articles, written by me and relating to my own cars.





Offline Iggy_Type_R


  • Joined: Nov 2008

  • Location:
  • Drives:
The main point of contention here is this point:

"for us to demonstrate your breach of Ferrari S.p.A.’s Intellectual Property Rights, pursuant the ICANN UDRP policy"

get that policy and read it in every detail, see if there's an out.

Otherwise they may have you busted :( You can always take to the ICANN court thing which will cost them more $$$ and I don't believe they can stich you up for the cost, but I am not sure - not a lawyer.

Luckily I never heard from them again - although I did get a nasty letter from Ferrari themselves for using their logo. My bad  :doh:



Offline 98octane

The main point of contention here is this point:

"for us to demonstrate your breach of Ferrari S.p.A.’s Intellectual Property Rights, pursuant the ICANN UDRP policy"

get that policy and read it in every detail, see if there's an out.
<snip>

Rob, your "out" under the Policy may be Paragraph 4(c)(iii):

Quote from: ICANN UDRP Policy
4. Mandatory Administrative Proceeding.
... 

c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

...

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.


You said above that....

<snip>
I'm not deriving any profit from the name. I'm not advertising any product belonging to Ferrari S.p.A. It's a private website offering a free forum service to invited members, and is primarily used to post technical articles, written by me and relating to my own cars.

... so on the face of it, it looks like you will be able to demonstrate your rights or legitimate interests to your domain name.  Maybe you could reply to the latest letter setting out reasons why you have legitimate rights/interests in the domain name under Paragraph 4(c)(iii)?

<snip>
Otherwise they may have you busted :( You can always take to the ICANN court thing which will cost them more $$$ and I don't believe they can stich you up for the cost, but I am not sure - not a lawyer.
<snip>

True too.  Complainant pays all the ICANN Administrative Panel fees.  Note that under the ICANN UDRP Policy, their remedies are limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant (unless they appeal to a court).



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