Ralph Lauren's application for '.polo' gTLD rejected

International

The proposed new generic top-level domain (gTLD) '.polo' has been the subject of a successful community objection brought pursuant to the New gTLD Dispute Resolution Procedure of the Internet Corporation for Assigned Names and Numbers.

The applicant for the '.polo' gTLD was Ralph Lauren Corporation. Ralph Lauren is the owner in various jurisdictions around the world of the trademark POLO, which it uses in association with apparel, accessories, fragrances and home furnishings.   

In March 2013 the United States Polo Association (USPA) filed a community objection against the application for the '.polo' gTLD.  The USPA was founded in 1890 with the objective of promoting the sport of polo; it is the governing body of the sport in the United States and has been recognised as such by the International Olympic Committee. The USPA is one of three full members of the Federation of International Polo (FIP), the worldwide body of the sport of polo. The USPA objection was supported by FIP. FIP was not, however, a party to the proceeding and merely provided evidentiary support, as did seven polo clubs from around the world, and 10 additional US-based polo clubs. 

A community objection is grounded in the ability of a delineated community to object to a proposed gTLD. In order for a community objection to be successful, the objector must prove that:

  1. the community invoked by the objector is a clearly delineated community;
  2. the community opposition to the application is substantial;
  3. there is a strong association between the community invoked and the applied for gTLD string; and
  4. the application creates a likelihood of material detriment to the rights or legitimate interests of a significant portion of the community.

The panel concluded that the polo sports community is a clearly delineated group of polo associations, athletes and supporters. Further, the panel found that there was substantial opposition to the application filed by Ralph Lauren. The panel was specifically swayed by the support to the objection by FIP, noting that it represented the global polo sports community. The panel also had no trouble in finding that there was a strong association between the applied for '.polo' string and the polo sports community. The panel noted that Internet users looking for information about the sport of polo would inevitably use 'polo' as a search term in internet search engines.

In order for detriment to be established, the USPA had to prove that the application creates a likelihood of material detriment to the rights or legitimate interests of a significant portion of the delineated community. Detriment is not shown by the mere fact that Ralph Lauren will be delegated the '.polo' string instead of the USPA or some other entity. Factors that could be used by a panel in making this determination include, but are not limited to:

  1. nature and extent of damage to the reputation of the community represented by the objector that would result from the applicant’s operation of the applied-for gTLD string;
  2. evidence that the applicant is not acting or does not intend to act in accordance with the interests of the community or of users more widely, including evidence that the applicant has not proposed or does not intend to institute effective security protection for user interests;
  3. interference with the core activities of the community that would result from the applicant’s operation of the applied-for gTLD string;
  4. dependence of the community represented by the objector on the domain name system for its core activities;
  5. nature and extent of concrete or economic damage to the community represented by the objector that would result from the applicant’s operation of the applied-for gTLD string; and
  6. level of certainty that alleged detrimental outcomes would occur.

The panel found that a significant portion of the polo community would be damaged if Ralph Lauren was granted the '.polo' string. Among the factors the panel noted to support its conclusion were that:

  1. Ralph Lauren's monopolisation of '.polo' would incorrectly give the impression that the polo sports community is associated with the commercial '.polo' gTLD;
  2. the '.polo' gTLD would operate as a restricted registry to promote Ralph Lauren’s brand, which would permit Ralph Lauren to exclude others, including members of the polo sports community, which would impair the community’s ability to promote the sport of polo; and
  3. if the '.polo' gTLD were approved, the polo sports community would see its presence on the Internet severely affected. 

The panel found that this could discourage businesses from sponsoring activities of the polo sports community and lead to economic loss.

The decision highlights some of the tension when common words are adopted as trademarks, and may spell bad news for other gTLD applicants facing a community objection.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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