Legal Battle Brews as Polo Gets Makeover
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Polo Ralph Lauren made its entrance on the digital stage Thursday with Polo.com, a luxury, designer e-commerce site aimed at allowing consumers to "experience the world of Ralph Lauren." But the launch was overshadowed by a domain dispute across the pond that evokes the law office more than Ralph Lauren's world of luxury country clubs.
On Oct. 25, attorneys for the company sent a cease and desist letter to Keith Collingridge, a Web developer and Internet service provider in Woldingham, England, who recently registered the domain po-lo.com. The URL delivers surfers to Woldingham Saddlery, an under construction equestrian site run by Collingridge's wife. Collingridge is also the owner of po-lo.com.uk.
"In view of Polo's prior rights in and to the Polo marks, we believe that your registration of this domain name constitutes, inter alia, infringement, false advertising and dilution of our client's valuable Polo Trademarks..." attorney Anthony Lo Cicero, of Amster, Rothstein & Ebenstein, wrote in the letter to Collingridge. "In addition, the recently enacted Intellectual Property and Communications Omnibus Reform Act of 1999 provides powerful remedies against "cybersquatters," including statutory damages of up to $100,000 per domain name."
Cicero demanded that Collingridge withdraw his registration of po-lo.com within 14 days..
"Now in this country, I've got to be honest with you, Polo as Ralph Lauren is unheard of," Collingridge said. "I know it may sound silly, but Polo in this country is obviously the Sport of Kings. It's been in this country for hundreds of years."
Neither Lo Cicero nor representatives of Polo Ralph Lauren could be reached for comment. However, Martin Schwimmer, general counsel for NameEngine, an intellectual property ASP, said the issue is muddy. Schwimmer, formerly a partner at intellectual property law firm Fross Zelnick Lerman & Zissu, participated in 1994 in the battle over MTV.com, the world's first reported domain name case. He is also a member of the International Trademark Association's Internet Committee and helped create ICANN's Uniform Dispute Resolution Policy (UDRP).
"The bottom line is: Both sides appear to have reasonable arguments in the U.S. and the U.K. -- hard to say without a full record who is right and who is wrong," Schwimmer said. "As has been said in a more presidential context: Too close to call."
Schwimmer said he is not aware of the extent of Polo Ralph Lauren's rights in the U.K.
"Assuming that PRL does have some rights in the U.K., then it may have infringement and passing off actions in the U.K. also (and it would not have jurisdictional problems that it would in the U.S.)," he said.
Schwimmer said in the U.S. Collingridge could argue:
- He has no minimum contacts with the U.S. and therefore a U.S. court would not have jurisdiction over him
- He is not using the name as a trademark (the trademark and trading name currently on the site is Woldingham)
- Po-Lo is not confusingly similar to the word Polo
- He is using the name Po-Lo descriptively because he will sell some type of goods associated with the sport.
He noted that in the U.K. Collingridge would not have a jurisdictional defense but the other arguments could be used. Also, under UDRP Schwimmer said there would have to be evidence on the record that infers Collingridge registered po-lo.com so as to deprive Polo Ralph Lauren of the name.
Collingridge said he has not yet decided if he will de-register the site and is waiting on legal advice.
Back in North America, Polo.com will go live to American consumers this weekend. Polo.com will offer online access to a full array of Ralph Lauren products from clothing and accessories to fragrances, vintage items, style tips and more. The site will even offer travel packages th