Expert Panel Finds Ralph Lauren is Not Entitled to Operate .POLO gTLD Based on Community Objection
When clothing company Ralph Lauren Corporation applied for the exclusive right to operate the .POLO gTLD, a battle ensued with the U.S. Polo Association, Inc. (USPA), the national governing body for the sport of polo in America and Canada. This month, an expert panel at the International Center for Expertise of the International Chamber of Commerce upheld USPA’s so-called “Community Objection” against the .POLO application and denied Ralph Lauren’s application. See U.S. Polo Association Inc. v. Ralph Lauren Corp., ICE, No. EXP/452/ICANN/69, 10/10/13. Pursuant to the policies set forth in the Internet Corporation for Assigned Names and Numbers (ICANN) Applicant Guidebook, the panel’s findings are to be considered an expert determination, which ICANN will accept.
To prevail in a Community Objection, USPA had to prove: (1) the community objecting to the .POLO application was clearly delineated, (2) a substantial portion of that community objects to the .POLO application, (3) there is a strong association between the objecting community and the .POLO application, and (4) the .POLO application creates a likelihood of material detriment to the interests of a significant portion of the objecting community.
The expert panel found that USPA’s objection satisfied each of these factors. First, the existence of many polo support organizations, and in particular a global governing body, the Federation of International Polo (FIP), demonstrated a clearly-delineated community for the sport of polo. Second, even though only a few individual polo organizations expressed opposition to Ralph Lauren’s .POLO application, the expert panel noted that support of individual polo associations was “not necessary for the establishment of substantial opposition” because the FIP, as the global representative of the sport, had made its opposition clear. Third, because “polo” is the name of the sport that the polo community promotes, the panel felt it was bound to be strongly associated with Ralph Lauren’s .POLO application. Finally, a major factor in finding detriment to the polo sports community was Ralph Lauren’s ability to operate the .POLO gTLD in a closed manner, meaning it could own and control all of the .POLO second level domains and prohibit third parties from registering second level domains (a second level domain is the string that comes just before the “DOT” in an internet address, e.g., www.sport.com or www.USPA.polo). The expert panel remarked that this monopolization of the .POLO gTLD would shut out the entire polo sports community from the gTLD that reflects their core identity, creating confusion for internet users and preventing polo sports organizations from promoting themselves online. Accordingly, the expert panel upheld USPA’s Community Objection to the .POLO gTLD.
As this is one of the first Community Objections to be decided, it could set a troublesome precedent for other gTLD applicants whose trademarks have multiple definitions or meanings. This is especially true when the trademark owner intends to operate the gTLD in a closed manner.
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