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