EDUCATIONAL AND PROFESSIONAL QUALIFICATIONS

Master in International Business, University of California at Los Angeles (UCLA), 1992;

LL.D., University of Turin, 1990.

European Trademark Attorney; admitted to practice before the Office for the Harmonization of the Internal Market (Community Trademark Office);

Italian Trademark Attorney.

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LANGUAGES

Italian, English, Spanish and comprehension of French and German.

December 7, 2007

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PRESENT POSITION

Partner, Studio Barbero (Turin) ;

Director, Barbero & Associates Ltd   (London).

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PROFESSIONAL EXPERIENCE BEFORE PRESENT POSITION

Partner, Jacobacci & Perani;

International Training Centre of ILO, Turin;

University Institute of European Studies, Turin;

Doland & Gould, Attorneys at Law, Los Angeles. 

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MEMBERSHIP IN PROFESSIONAL BODIES

Member of INTA (International Trademark Association);

Member of ECTA (European Communities Trademark Association);
Member of MARQUES (The Association of European Trade Mark Owners)

Member, “Ordine dei Consulenti in Proprietà Industriale” (the professional body of the Italian Intellectual Property Consultants) n. 869;
Panelist at the Chamber of National and International Arbitration of Milan (established by the Chamber of Commerce of Milan);
Panelist at the Czech Arbitration Court for .eu;
Panelist of the Italian Registry for the ccTLD “.it”;
Member Rotary International since 1997;
Member Italian Society for the International Organisation;
Founder and member Lawyers’ Society of ELSA (ELS);  former member of the ELS International Executive Committee in charge of Marketing.

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AREAS OF SPECIALIZATION

Intellectual Property - domain names arbitration and litigation – computer law - trademarks - licensing;

International Trade Law - Business transactions.

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EXPERIENCE IN INTELLECTUAL PROPERTY

Seven years as a Trademark Attorney at Jacobacci & Perani, a leading Italian Intellectual Property firm;

In March 2000, established in Torino the Studio Barbero, IP firm specialising in Domain Names and Internet Consulting;

In September 2000, founded in London the Barbero & Associates Ltd, focusing in domain names management, monitoring and registration worldwide;

Handled several aspects of national and international Industrial Property related work, including:  trademark availability searches;  filing and prosecuting trademark applications; drafting commercial contracts; copyright issues; negotiating licensing, assignment and coexistence agreements. 

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EXPERIENCE WITH RESPECT TO DOMAIN NAMES

Specialised in Domain Names issues and the protection of Intellectual Property on the Internet; negotiated and dealing with over 700 cases of domain name grabbing and assisted clients in litigation and arbitration in Italy and in other jurisdictions for Internet related matters, since 1995. Drafted several Complaints according to the Uniform Dispute Resolution Policy and other arbitration procedures;

From November 2000 until April 2002, member of the Board of Directors of the Italian branch of a British company specialised in the registration and monitoring of distinctive signs on the Internet;

As of 2000 Director of Barbero & Associates Ltd, an IT firm based in London specialized in the registration, management of thousands of domain names both as ccTLDs worldwide and gTLDs; advising Multinational corporations and International law firms on domain names registration strategy worldwide and Intellectual Property protection on the web;

Professor at the “Master Universitario in Diritto della Rete“ (Internet Law Master) at the editions 2007 – 2003, organized by the University of Padova;

Professor at the “Master of Laws (LL.M.) in Intellectual Property” organized by the WIPO Worldwide Academy and the Faculty of Law of the University of Turin at the editions 2007 – 2001;

Professor and Member of the Support Committee of the “International Trade Law Post-Graduate Course” at the editions 2007 -1991 organized by the University Institute of European Studies under the auspices of the University of Turin (Italy), the University of Fribourg (Switzerland), the Universidad Autónoma de Madrid (Spain), the UNCITRAL (United Nations Commission on the International Trade Law) and the UNIDROIT (International Institute for the Unification of Private Law);

Lecturer at the congress “Trademarks and Domain Names” organized by the Chamber of commerce of Torino on “Nomi a dominio: principali caratteristiche rispetto ai marchi e risoluzione delle controversie” Torino, November 2007;

Lecturer at the congress “Marchi Marketing Pubblicità” organized by the University of Parma on “La Comunicazione d’impresa su Internet e i conflitti fra Marchi e Domain Names”, Parma, October 2007;

Professor at "Law & Business in Europe" post- graduate course organized by the University Institute of European Studies, Torino October 2005;

Lecturer at the University of Turin on “Uniform Domain Names Dispute Resolution Policy”, January 2005;

Lecturer at the congress “Managing conflicts” organized by the Chamber of commerce of Torino on “The WIPO experience: Mediation and Domain Names Uniform Dispute Resolution Policy”, Torino, March 2004;

Lecturer for the Registry of the ccTLDs .it on Arbitration related matters in courses held in Italy from 2001 to date.

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Attended inter alia the following conferences on Trademarks and Internet related matters:

- MARQUES – The Association of European Trade Mark Owners, Porto, September 2007
- ECTA European Communities Trade Mark Association, Deauville, June 2007;
- INTA, Chicago, May 2007;
- Czech Arbitration Court – First Panelist Meeting,  Prague,  March 2007;
- INTA - IP Rights Enforcement: Protecting Product Configuration in Europe and Beyond Forum, Rome, December 2006
- MARQUES – The Association of European Trade Mark Owners, Malta , September 2006
- INTA, Toronto, May 2006;
- “WIPO Domain Names Panelist Meeting”, Geneva, October, 2001, 2002, 2003 , 2004 (also as a lecturer), 2005, 2006, 2007;
- ECTA European Communities Trade Mark Association, London, June 2005;
- INTA, San Diego, May 2005;
- International Conference on Dispute Resolution in International Science and Technology Collaboration, Geneva, April 2005;
- INTA, Atlanta, May 2004;
- MARQUES – The Association of European Trade Mark Owners, Rome, September 2004;
- INTA, Amsterdam, May 2003;
- Second International Conference on Electronic Commerce and Intellectual Property, Geneva, September 2001;
- “ICANN and trademark protection in the New gTLDs”, INTA, San Francisco, May 2001;
- “WIPO Conference on Intellectual Property questions related to the ccTLDs, Geneva, February 2001;
- WIPO International Conference on Dispute Resolution in Electronic Commerce”, Geneva, November 2000
- “Advanced Internet Enforcement Issues”, INTA, Denver, May 2000;
- “Domain Name System”, National Council of Research, Rome, November 1999;
- International Conference on Electronic Commerce and Intellectual Property, Geneva, September 1999;
- “Intellectual Property on the Internet & Electronic Commerce”, Brussels, September 1998;
- “Advanced Intellectual Property on the Internet”, MARQUES - Brussels, October 1997;
- “Internet:  Profili Giuridici (Internet Law Aspects)”, Università degli Studi di Pavia, October 1996.

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MAJOR PUBLICATIONS

AA. VV., “Trademark Law &  the Internet - International Developments in Italy” pp. 535- 548, INTA, 2001
AA. VV., “Il marchio industriale nell’era digitale” in “Nuove Tecnologie e Diritto”, Facoltà di Giurisprudenza di Torino e Società Italiana per l’Organizzazione Internazionale, 2001
AA. VV.,  “Trademarks in Cyberspace: the domain name challenge in the Italian Experience” in New Trends in International Trade Law, Giappichelli, 2000;
AA. VV. “Internet e Servizi Telematici:  riflessi sulla tutela della Proprietà Intellettuale (Internet and Telecommunications:  Intellectual Property Protection)” Jacobacci & Perani Publications, 1997.

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EXPERIENCE IN COURT LITIGATION

Acted as counsel for a party in numerous court cases involving intellectual property rights in Italy and other jurisdictions.

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PROFESSIONAL TRAINING AND EXPERIENCE IN MEDIATION

“Advanced WIPO Workshop for Mediators in Intellectual Property Disputes”, World Intellectual Property Organization (WIPO), Geneva, June 2007
“Mediation Interest Group Meeting” Geneva, September 2004, 2006, 2007.
 “WIPO Workshop for Mediators in Intellectual Property Disputes”, World Intellectual Property Organization (WIPO), Geneva, June 2004.
Acted as counsel in over 30 domestic and international mediation involving intellectual property rights and business transactions.
Used acquired mediation skills and techniques on numerous instances during settlement negotiations of domain names, trademarks and other Internet-related matters.
Acted as Mediator in an international mediation procedure according to the WIPO rules for a three million euro trademark dispute, successfully settled after a two-day session.

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PROFESSIONAL TRAINING AND EXPERIENCE IN ARBITRATION

“Preventing and managing International Commercial Disputes”, Rome, September 2007;
 “The Evolution of International Arbitration in the US and the EU: Jurisprudence and Professional Practice”,  Venice, September 2005;
As WIPO Domain Names Panelist decided over 80 cases four of which cited in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”.
As Panelist of the Czech Arbitration Court for .eu domain names decided 7 cases;
Appointed President of the Arbitration Panel for one ad hoc arbitration involving trademark and domain name, Milano, August 2001.