I go toe to toe with a cease-and-desist lawyer from Italy

[Undertoad]

Monica Feia m.faia@cantaluppi.com
Oct 30

Dear Sirs,

We are writing to you in the name and on behalf of Great Lengths International S.r.l. and its Austrian branch Great Lengths Haarvertriebs GmbH (hereinafter “GL companies”), operating in the field of professional hair extensions since 1991.

As you know, our clients are the owners of several well-known GREAT LENGTHS trademarks and domain names born on their products/services and protected all over the world in the past years.

Further to a worldwide search, GL companies were recently aware of the fact that on April 28, 2011 you have registered the domain name GREATLENGTHSHAIRDESIGN.COM and are currently using on the Internet said name for quality hair care services.

It is self-evident that the domain name GREATLENGTHSHAIRDESIGN.COM and the de facto trademark GREAT LENGTHS HAIR DESIGNS by Colleen used by you are almost identical to the earlier registered rights enjoyed by GL companies and that the goods/service coverage of all these distinctive signs is overlapping.

As you are aware, your registration and use of the domain name GREATLENGTHSHAIRDESIGN.COM and use on the Internet of the trademark GREAT LENGTHS HAIR DESIGNS by Colleen are liable to cause misleading and confusion to consumers, which is obvious bad-faith and shall be deemed infringement of legitimate rights of our clients, because you neither own any legal rights over the main part of the domain name and trademark GREAT LENGTHS nor have just cause for registration and use of mentioned domain name and trademark.

In view of the above violation of our clients’ rights, in the name and on behalf of GL companies we hereby request you as follows:
1)
- immediately transfer the ownership of the domain name GREATLENGTHSHAIRDESIGN.COM to Great Lengths International S.r.l.;
2)
- immediately cease the use in commerce and on the Internet of the domain name GREATLENGTHSHAIRDESIGN.COM and of the trademark GREAT LENGTHS HAIR DESIGNS by Colleen for quality hair care services and similar goods/services, as well as any further related distinctive signs, like trade names, trade signs, etc.;

- immediately sign a letter in which you declare to have already ceased said use in commerce and on the Internet, as well as you undertake to never register and use in commerce and on the Internet in the future formative GREAT LENGTHS domain names, trademarks or similar ones (included any further related distinctive signs, like trade names, trade signs, domain names, etc.) at worldwide level for quality hair care services and/or similar goods/services.

We inform you that if we do not receive a reply to this letter within 15 days from its receipt, our clients will resolve this matter by means of arbitration or judicial means.

Yours faithfully,

Monica Feia
Cantaluppi & Partners
Junior Partner - Trademark Attorney
Director of Trademarks Department - Rome office
Viale della Tecnica, 205 - 00144 Rome, Italy

[Undertoad]

undertoad@gmail.com
Oct 30

Great news! The domain name GREATLENGTHSHAIRDESIGN.COM is now available for your purchase. I am willing to sell for a price much lower than the cost of arbitration. Please inform your client that for $500, I will gladly assist them in transferring the domain by unlocking the registrar lock and sending them the EPP code required for transfer.

A cheque for $500, written to Token Internet Marketing, should be sent by Fedex or other overnight service to me at:

Tony S.
Token Internet Marketing
Collegeville, PA 19426

Immediately upon receipt I will unlock the domain and send the code both to you, and to the email address you designate (perhaps that of the person handling Internet services for your client).

Thanks very much and have a great day!

[Undertoad]

Monica Feia
Nov 8

Dear Mr. S,

I refer to your prompt reply of October 30, 2012, the contents of which I duly discussed with the clients.

In consideration of the damage caused by your domain name registration, as well as of the expenses that GL companies are bearing for this matter, our clients are not available to pay any sum.

Therefore, the only way to solve this matter amicably is:

- to transfer for free the ownership of the domain name GREATLENGTHSHAIRDESIGN.COM to Great Lengths International S.r.l.;

- to cease the use in commerce and on the Internet of the domain name GREATLENGTHSHAIRDESIGN.COM and of the trademark GREAT LENGTHS HAIR DESIGNS by Colleen for quality hair care services and similar goods/services, as well as any further related distinctive signs, like trade names, trade signs, etc.;

- to sign a letter in which you declare to have already ceased said use in commerce and on the Internet, as well as you undertake to never register and use in commerce and on the Internet in the future formative GREAT LENGTHS domain names, trademarks or similar ones (included any further related distinctive signs, like trade names, trade signs, domain names, etc.) at worldwide level for quality hair care services and/or similar goods/services.

I look forward to hearing from you in connection with the above as soon as possible.

Best regards,

Monica Feia
Cantaluppi & Partners
Junior Partner - Trademark Attorney
Director of Trademarks Department - Rome office
Viale della Tecnica, 205 - 00144 Rome, Italy

[Undertoad]

undertoad@gmail.com
Nov 11

Oh Monica! I looked you up on your firm's website. You are a beautiful lady. Why did you go into law for a career? What's it like in Rome? I hear the men of Italy are so bound to their mamas that they live at home and have their mothers still doing their laundry at age 30. That would be unthinkable in my culture. I love mom, but I did want to get out of the house after I graduated college.

Monica, I don't think you actually have any legal standing. Domain name arbitration is costly ($2000), takes 6 months, and a trademarked name such as Colleen's will win anyway. I'm inclined to protect her interests, because I have no respect at all for lawyers going after small businesses' domains and tossing around threats. I'm not threatened. I have nothing to lose in this matter.

And if your client feels "damaged" by a little hair salon, but not damaged enough to pay $500 to recover the domain immediately and painlessly, they aren't really serious.

Let's not go another round on this. If you email me again with anything other than acceptance of my offer, I will send your email to the Spam bin and Gmail will filter you out of my life forever. I wouldn't want that to happen. I like you. I don't respect you, but I like you. I would hate to hear again that we are not "amicable".

Your buddy,

Tony

[Undertoad]

(What Monica doesn't know is that my client has not paid their bill and I was going to shut them down anyway. But I still have ownership of the domain name for another 10 months.)

[BigV]

toe to toe?

more like boot to butt. kick her ass UT.

[richlevy]

Originally Posted by Undertoad

(What Monica doesn't know is that my client has not paid their bill and I was going to shut them down anyway. But I still have ownership of the domain name for another 10 months.)

Which she now does if she searches for her name on the Internet.

Monica, are you listening?

[Undertoad]

I changed her name's spelling, thanks rich

[glatt]

Originally Posted by Undertoad

I changed her name's spelling, thanks rich

In one spot you did, but not in the other. It's at the top and bottom of your posts.

[Undertoad]

thanks

[Trilby]

Tony, you are so totally hired.

You are awesome!!!!

YAY!

[Clodfobble]

It's all that working in a pawn shop, it's made him sassy and unassailable. You rock, UT!

[Flint]

The ironing is delicious.

[xoxoxoBruce]

Originally Posted by Clodfobble

It's all that working in a pawn shop, it's made him sassy and unassailable. You rock, UT!

It's actually getting out a surveying the real world population made him realize he's much better than he thought.

[footfootfoot]

We've secretly switched a domain name being used by some crazy Austrians, let's see if they notice...

Monica is rather dishy. I wish you'd pursued wooing her more and completely ignoring her attempts at being business like.

This is a rich mine.

You could also go the Godfather route and next time she contacts you the price goes UP.