In a ruling dated October 10, Burkhard Hess upheld the USPA’s community-based objection. He found that it had “persuasively proven that damage for a significant portion of the community it represents would result should the Applicant be granted the applied-for ‘.polo’ string”.
USPA brought the objection as a representative of the global polo sports community. Other polo clubs in the US and other countries supported it, leading the panellist to conclude that there is “substantial opposition within the polo sports community”.
Hess also found that polo sports is a “clearly delineated community” and said the fact that USPA did not object to the application in the public comment period did not preclude the filing of a community objection.
Moreover, he found that if Ralph Lauren’s application were approved, the polo sports community would see its internet presence severely affected, resulting in economic damage, and that potential sponsors would be discouraged from sponsoring activities, which could lead to further economic loss.
Hess specifically mentioned Icann’s recent decision to suspend the evaluation of more than 90 applications for generic or dictionary words as gTLDs and in particular the GAC recommendation to disallow the application for the .amazon string.
Brian Beckham, head of legal policy at Valideus, told Managing IP: “It will trouble trade mark owners to see that the panel seemed to disregard the applicant’s globally famous trade mark rights and no kind of positive defence such as legitimate co-existence seems to have been considered.”
He added that the finding raises concerns for applicants for brand gTLDs in current and future rounds: “You might apply to avoid what’s been called permanent string preclusion, and find at the very last minute that the rug has been pulled from under you.”
There is no formal process to appeal community objection decisions under Icann’s procedures. However, Ralph Lauren may be able to take other action, for example in court.
The USPA was represented by Gerald J Ferguson of Baker & Hostetler and Ralph Lauren by Andrea L Calvaruso of Kelley Drye & Warren.
ICC panellists have also so far issued determinations regarding applications for .architect, .fly, .gay and .shop. Many other community objections have been filed, and decisions are expected soon.