Raw Old Leave out United Nations Endorse POLO Magazine

 

 

 

Australia, brisbane,

WIPO Arbitration and Mediation Center
Parent organization: United Nations

The World Intellectual Property Organization (WIPO) is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world."  Headquarters Geneva, Switzerland.

 Further Reading -

WIPO Arbitration and Mediation Center EXTRACT " . . .

ADMINISTRATIVE PANEL DECISION - PRL USA Holdings, Inc .v. Catherine Mary Witham Case No. D2002-0361    
1. The Parties
The Complainant is PRL USA Holdings, Inc of 103 Foulk Road, Suite 2154, Wilmington, DE 19803, United States of America.
The Respondent is Catherine Mary Witham of Mermaid Beach, Queensland, Australia.
. . ."POLO, through its principal and designer Ralph Lauren, has become a nationally and internationally known fashion leader in clothing and related fashion accessories. Also, POLO has acquired a reputation for high quality products�. Accordingly, we find that plaintiff's mark is a strong mark and is therefore entitled to broad protection."

- Of the other 6 cases, 4 also involved counterfeit POLO goods and in all of them the Court recognised the POLO marks as strong trademarks, which had achieved a secondary meaning. Of the others, one concerned infringing embroidery of the Polo Player Symbol, the Court awarding treble damages for wilful trademark infringement. The other concerned an unsuccessful attempt by the Defendant to argue that POLO was a generic description for a certain type of shirt.The Complainant also refers to its <polo.com> website, an example of which is exhibited to the Complaint featuring a section entitled POLO.COM MAGAZINE, described as "The Ralph Lauren Online Life Style Magazine".
The Respondent's Business 
4.4.1 The Response states that the Respondent is the sole director of Polo Magazine Pty Ltd, an Australian company. That company is the registered proprietor of Australian trade mark registration No. 363, 808 for POLO DOWN UNDER in Class 16 for periodicals relating to polo. That mark was applied for on August 4, 1981, and granted in 1987.
4.4.2 The Response states that the Respondent and her related entities have published periodicals and magazines about Polo since 1981. The publication, entitled Polo Down Under, was first published in 1981. That periodical was acquired by Polo Magazine Pty Ltd on June 24, 1998. Another magazine, entitled Polo Magazine was first published by the Respondent's company in 1994. It is a glossy, quarterly magazine about Polo, the sport, the people and the lifestyle associated with them. The Contents Page from the Winter 1998 [June to August] issue is exhibited to the Response. hird, the Respondent's company also published Polo Calendar Supremo, which was introduced in 1999. The Response exhibits a website captioned UNDER CONSTRUCTION <www.polomag.com> <www.polomagazine.com.au> containing a news item relating to the Gold Cup of the Americas polo tournament in Wellington, Florida. The exhibit is marked "WINTER 1998" in manuscript. The Respondent states in the additional particulars of the Response that she is currently developing an interactive website that will provide information and services about Polo. . .
Findings
. . . the Complainant's commercial success in manufacturing and selling apparel and other items under and by reference to the POLO and POLO - formative marks does not give the Complainant the right to prevent any third party domain names from incorporating the word "polo".
Finding for the Complainant on the issue of likelihood of confusion, the Panel stated: Respondent's history of publishing periodicals and magazines about Polo since 1981 gives her the stronger rights. . .
The Complaint contains no evidence of bad faith. The suggestion in the Complaint that the Respondent owns no POLO trademark registrations nor does business under the POLO name [see, paragraph 5.1.2 above] is wrong on the facts. The fact that the Complainant's POLO and POLO - formative trademarks are well-known has no relevance to good faith on the facts of this case.
6.4. Confusingly Similar
In the light of the Panel's findings in relation to paragraphs 4a(ii) and (iii) below, it is not necessary to decide on the issue of confusing similarity. The Panel would, however, observe that the US cases cited by the Complainant in this respect [see, paragraph 5.1.1 above] all involved identical goods or services. By contrast, in this case the parties' businesses are completely different. Similarly, the cases cited by the Complainant as evidence of the well-known status of the POLO and POLO - formative trademarks all concerned goods of the same nature, the majority of the cases involving counterfeit POLO products.
6.5. Rights or Legitimate Interests The Complainant's assertion that the Respondent owns no trademark registrations which include the mark POLO is wrong. The Respondent is the registered proprietor of the Australian trademark POLO DOWN UNDER for "periodicals relating to polo" in Class 16 which dates from 1981. The Complainant also mistakenly asserts that the Respondent does not do business under the POLO name. She has published periodicals and magazines including the word POLO since 1981 [see, paragraphs 4.4.2 and 4.4.3 above] and appears to have operated a website relating to the sport of polo under the domain name in issue since the Winter of 1998. On the evidence the Response demonstrates the Respondent's rights and legitimate interests. . .  the Complaint, therefore, fails to meet the requirement of paragraph 4a(ii) of the Policy.
6.6. Registered and Used in Bad Faith
Similarly, the Complaint plainly fails either to establish any of the paragraph 4b circumstances or to establish bad faith registration and use by other evidence. The Respondent is correct in drawing a parallel between the facts of this case and of the e-polo.com case [WIPO Case No. D2002-0108 referred to in paragraph 5.2.7 above].
7. Decision
For all the foregoing reasons the Complainant has failed to meet the requirements of paragraphs 4a(ii) and (iii) of the Policy and, in the circumstances, the Complaint is denied.

---

 For Full Transcipt go to- http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0361.html