Andy:

 

> I think we're actually opposite each other in the other pending car/cars case

 

First of all, it is the parties we represent who are opposite each other in any pending case.  And, yes, UniRegistry (not Name Administration) is opposite Google in the pending car/cars case. That is, I suppose, all the more reason for us to share our perspectives with the stakeholder group.  Google and UniRegistry were also allied with each other in one of the other proceedings.  Our group includes a number of competitors who nonetheless may have common or opposed interests at various times. This process has made for some strange relationships for sure. J

 

> Rather, as an Internet policy matter, I respectfully believe that allowing generic singular-plural  > TLDs will be confusing to consumers and bad for businesses that wish to operate websites on one of  > the two TLDs.

 

That is certainly a valid position "as an internet policy matter". The circumstances here are that the String Similarity objection process does not empower the ICDR panelists to formulate internet policy.  They were given a narrow mandate to apply a consensus policy of the ICANN community.  The policy they were given to apply is certainly open to argument, criticism, revision, review, and so forth, but that policy unfortunately included a term of art in trademark disputes, and asked panelists to apply it to disputes which are not trademark disputes. It was to that to which I was responding.

 

Your hypothetical with respect to used.car and used.cars is also well taken.  It applies with equal force to plurals at the second level.  One need not "imagine" a situation where usedcar.com and usedcars.com are operated by two different parties.  That is actual internet reality, and it has been actual internet reality for many years.  Those sites are operated by different parties right now, and not in a hypothetical future. This scenario is open to the same sorts of phishing/scamming/abuse as any potential TLD and yet no one has either complained of such matters nor have they suggested that a policy should be put forth to curtail the confusion that consumers might experience, if such confusion exists at all.

 

One can also imagine a hypothetical future in which, for every English noun taking "s" as a plural, whether any noun is, or is not, a plural is determined by "who won an auction ten years ago" as if English nouns were a collection of irregular verbs to be memorized.

 

But from the perspective of utility to domain registrants, there may be registrants who wish to advertise and promote "a car", such as a particular model of car, and there may be registrants who sell many different kinds of cars.  These two user cases will favor either a singular or a plural based on their business and advertising objectives.

 

However, deciding whether singulars and plurals should co-exist as an "internet policy matter" is asking too much of the panelists assigned to apply the rules to individual disputes on a case-by-case basis. This could invariably result in confusion as different panelists reached different conclusions. This is why we should not entrust policy issues to the individual discretion of panelists.  It is our job as the community to decide general policy issues. There was no overall policy on this particular question, and simply throwing up our hands as a community and letting ICDR panelists sort it out is the worst way to make policy. I don’t believe we should outsource our role in determining policy to dispute resolution providers.

 

> if is literally impossible to win a string confusion objection unless ICANN had already placed the strings in contention...

 

One of the owners of a duly-issued European trademark registration has said the same thing in relation to Legal Rights Objections, including one in which Charleston Road Registry prevailed. Because a case did not test where the balancing point of the policy may be is not a valid basis for claiming that it would never go the other way. In future rounds, and in relation to things such as chartered TLDs or brand TLDs, we would likely see different results than we have so far.

 

Also, the entire ICANN application process was conducted in English, and in Latin script, with which the evaluators were familiar. While one might assign some weight to the ICANN string similarity panel with respect to English words and Latin script, to say that the policy "doesn't work" as applied to things outside of the presumed expertise of the evaluators, may be an overly broad statement.

 

> it would have been nice to have that guidance prior to everyone expending money and resources on these proceedings

 

Apparently some TLD applicants received different guidance than others, planned for these sorts of objections to arise, and made decisions on that basis. There were still other applicants who applied for both singular and plural versions of the same English TLD.

 

One obvious track going forward is for registries that operate singular/plural TLDs to treat TLD delegations as a service which involves a public interest, and to work out practical ways among themselves to best serve the internet community. Not every potential

problem needs to be treated as one of either law or policy, in preference to practical solutions which serve the best interests of

registrants, consumers, and businesses.  With that said, we occasionally should remember Jon Postel's commentary to the effect that it is not appropriate to think of TLD delegations solely in terms of proprietary interests.

 

Respectfully,

 

Mari Jo

 

 

 

From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Andy Abrams
Sent: Wednesday, August 14, 2013 4:34 PM
To: Mari Jo Keukelaar
Cc: jscottevans@yahoo.com; bc - GNSO list

Subject: Re: [bc-gnso] BC comment on singular plural

 

Hi Mari Jo,

 

Thank you for your input - I think we're actually opposite each other in the other pending car/cars case, so it's good to get other perspectives.  You raise some very valid points, and I think the ICDR will likely agree with your legal reasoning.  But speaking only for myself, my concerns are not based on the application of trademark law at the top level.  Rather, as an Internet policy matter, I respectfully believe that allowing generic singular-plural TLDs will be confusing to consumers and bad for businesses that wish to operate websites on one of the two TLDs.  Imagine a case where a legitimate business is faced with negative PR, or worse, scams/phishing, etc. because half of their prospective customers mistakenly go to used.cars instead of used.car.  Secondly, simply as a matter of process, if is literally impossible to win a string confusion objection unless ICANN had already placed the strings in contention (thereby making the need for an objection moot), it would have been nice to have that guidance prior to everyone expending money and resources on these proceedings.  I guess we'll learn very soon whether the remaining singular-plural decisions follow suit...

 

Best,

 

Andy

 

On Wed, Aug 14, 2013 at 12:41 PM, Mari Jo Keukelaar <mj@johnberryhill.com> wrote:

To be clear: the decisions reached in car/cars and hotel/hotels are actually more in keeping with present interpretation of trademark law than they are dissimilar since plurals of generic words are not "confusingly similar" to other generic words under traditional trademark analysis. We should avoid applying terminology from trademark law out of context, in what are contests between strings that are not themselves trademarks.

 

In these "generic word" disputes, the objecting parties have tended to make arguments based on trademark confusing similarity analysis. In that analysis, though, the trademark has already been determined to be distinctive. So those circumstances involve comparing something to something else which has established distinctiveness. The point is to avoid erosion of what are already distinctive marks. That reasoning just does not apply to generic terms.

 

This has been true for years under the Uniform Domain Name Dispute Policy. No confusing similarity was found between “Tire Discounter” and “Tire Discounters” despite the difference of only a single letter in Tire Discounters, Inc. v. TireDiscounter.com, NAF Claim Number:

FA0604000679485 (“[b]ecause the mark is merely descriptive, small differences matter”).

 

Nor was confusing similarity found between the “The Suit Warehouse” mark and a “SuitWarehouse” domain name because the presence of descriptively common words necessarily restricts the “confusingly similar” analysis very closely to exact identity. The Men's Wearhouse Inc. v. Brian Wick d/b/a Defaultdata.com, NAF Claim Number: FA0208000117861.

 

The results have been no different under the Lanham Act. In a similarity analysis between “ENTREPRENEUR” and “ENTREPRENEUR PR” in two internet domain names, the 9th Circuit declined to find confusing similarity, noting, “[i]n the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.” Entrepreneur Media, Inc. v. Smith, 279 F. 3d 1135, 1147 (9th Cir., 2002).

 

Additionally, the notion that terms lacking distinctiveness are not subject to "confusing similarity" analysis is also true outside of the US, as the High Court of Australia opined in Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd, [1978] HCA 11:

 

“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, it’s very descriptiveness ensures that it is not distinctive of any particular business.”

 

Of course if you are dealing with established distinctive marks then, yes, "Verizons" will be confusingly similar to "Verizon". But the scope of "confusing similarity" has always been delimited by the distinctiveness of the mark under analysis.

 

That a panel, applying ordinary principles of application of the trademark term "confusingly similar" would decline to find such similarity between two generic words is neither surprising nor unusual. If this was an unexpected result, then one might just as well ask how lawyer.com and lawyers.com manage to exist under different ownership (along with cars.com/car.com, house.com/houses.com dog.com/dogs.com, and many other generic words).

 

Furthermore, and perhaps even more importantly, under the ICANN rules we are not merely looking at "confusing similarity" but rather, a higher standard of "impermissible" confusing similarity. Comparing these string objections to outcomes in trademark cases is the proverbial mixing of apples and oranges because the generic strings involved are not, as a threshold matter, even trademarks. The lack of distinctiveness in generic words drives the result that they are not entitled to the broad swath of protection afforded that which would be impermissibly confusing.

 

ICANN has done much to protect trademark interests and we can all argue as to whether they have done enough or not.  Here, however, we are not even talking about trademarks; we are dealing with two generic terms.  The panels did not lose sight of that and I wonder why we sit here bashing them for applying the Policy we all approved and the law over which we’ve little control.

 

Mari Jo Keukelaar, M.A./J.D.

Name Administration, Inc.

 

 

 

From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Andy Abrams
Sent: Tuesday, August 13, 2013 7:09 PM
To: Steve DelBianco

Cc: bc - GNSO list

Subject: Re: [bc-gnso] BC comment on singular plural

 

Update: the first singular-plural decisions have come in.  Both singular-plural decisions have gone against a finding of string confusion (our car/cars objection against Donuts, and a Hotel Top-Level-Domain S.a.r.l. v. Booking.com B.V. for hotel/hotels).  In the car/cars decision, the Panel stated: "It is true that 

the ICANN visual similarity standards appear quite narrow, but it is not the role [of] this Panel to substitute for ICANN’s expert technical findings."  In the hotel/hotels decision, the Panel similarly stated: "I find persuasive the degrees of similarity or dissimilarity between the strings by use of the String Similarity Assessment Tool, that ICANN did not put the applications for .HOTEL and .HOTELS in the same contention set."  In other words, the early results suggest that the ICDR may give complete deference to ICANN's earlier refusal to essentially find any instances of string confusion, no matter how close the strings.

 

Andy

 

On Thu, Apr 11, 2013 at 12:50 AM, Steve DelBianco <sdelbianco@netchoice.org> wrote:

Here's what we just told the Board at the Public Forum, on behalf of the BC

 

ICANN’s String Similarity Panel was to place into contention sets any strings that create a possibility of user confusion.

 

But in late February ICANN published contention sets that did NOT include 24 pairs of singular-plural forms of the same string (English and Spanish)     Sport(s) Loan(s)    Web(s)    Game(s)  Hotel(es)

 

Risks of allowing both singular and plural TLDs for the same word are well understood.

-confusion

-precedent for the next round

-ICANN looking pretty ridiculous

 

What’s not understood is how it happened and what we can do about it.

 

First response is to ask if the panelist follow GNSO Policy on confusingly similar.

 

Second response is “Chong”  ( Chinese for “Do-over” )

-Do-over on just these 24 pairs

- WIPO Mediation Rules, Article 1 says, “Words used in the singular include the plural and vice versa, as the context may require.”

 

Guess we could correct the Guidebook (plurals are confusingly similar)

 

String Confusion Objections on 7 of these pairs are in the hands of the ICDR rightnow.  If ICSR does the right thing and finds these pairs should be contention sets, The Board can apply this rule to ALL 24 pairs

 

Failing that, there’s Formal Reconsideration. 

 

We all worry about threat from inter-governmental groups just waiting for ICANN to stumble.

 

We have enough vulnerability to stumble with so many unknowns in the new gTLD launch.

 

No need to add to our vulnerability with this self-inflicted wound

 

--
Andy Abrams | Trademark Counsel
Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043

(650) 669-8752

 

--
Andy Abrams | Trademark Counsel
Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043

(650) 669-8752