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
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 <https://www.google.com/voice#phones>
+ 1.... 2013/8/13 J. Scott Evans <jscottevans@yahoo.com>
Ridiculous.
Sent from Yahoo! Mail for iPhone
------------------------------ * From: * Andy Abrams <abrams@google.com>; * To: * Steve DelBianco <sdelbianco@netchoice.org>; * Cc: * bc - GNSO list <bc-gnso@icann.org>; * Subject: * Re: [bc-gnso] BC comment on singular plural * Sent: * Tue, Aug 13, 2013 11:08:58 PM
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 <https://www.google.com/voice#phones>
-- *Gabriela Szlak * www.clared.co www.estudiorosz.com.ar www.einstituto.org <http://www.einstituto.com.ar/> www.gabrielaszlak.com.ar <http://www.gabrielaszlak.com.ar/> *Skype:* gabrielaszlak *Twitter: @*GabiSzlak La información contenida en este e-mail es confidencial. The information in this e-mail is confidential.
That paraphrasing of the reasoning makes it seem like the experts are entirely shirking their duty as independent neutrals, and are making the String Similarity Objection completely superfluous/useless. Andy can you send copies of the decisions please? Or are they posted somewhere? Thanks, Mike Mike Rodenbaugh RODENBAUGH LAW Tel/Fax: +1.415.738.8087 <http://rodenbaugh.com> http://rodenbaugh.com From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of J. Scott Evans Sent: Tuesday, August 13, 2013 4:22 PM To: abrams@google.com; sdelbianco@netchoice.org Cc: bc-gnso@icann.org Subject: Re: [bc-gnso] BC comment on singular plural Ridiculous. Sent from Yahoo! Mail for iPhone _____ From: Andy Abrams < <mailto:abrams@google.com> abrams@google.com>; To: Steve DelBianco < <mailto:sdelbianco@netchoice.org> sdelbianco@netchoice.org>; Cc: bc - GNSO list < <mailto:bc-gnso@icann.org> bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Tue, Aug 13, 2013 11:08:58 PM 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 <javascript:return> > 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 <https://www.google.com/voice#phones> (650) 669-8752
Hi Mike, Attached are copies of the two decisions. We'll see if the other ICDR cases follow suit, but in these two cases, it seems that a decision was made up front to not find string confusion unless the strings were identical (in which case there is no need to bring an objection) or the strings were symbolic or visual equivalents (e.g., com v. c0m, which does not exist at the top level as far as I know, or unicorn v. unicom, which again, was already placed by ICANN into a contention set). Then it appears that the somewhat tortured reasoning was applied retroactively. If this is the case, then it will literally be impossible to win a string confusion case, and I agree that the entire process is rendered completely superfluous/useless. Andy On Tue, Aug 13, 2013 at 5:07 PM, <icann@rodenbaugh.com> wrote:
That paraphrasing of the reasoning makes it seem like the experts are entirely shirking their duty as independent neutrals, and are making the String Similarity Objection completely superfluous/useless.****
** **
Andy can you send copies of the decisions please? Or are they posted somewhere?****
** **
Thanks,****
Mike****
** **
Mike Rodenbaugh****
RODENBAUGH LAW****
Tel/Fax: +1.415.738.8087****
** **
*From:* owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] *On Behalf Of *J. Scott Evans *Sent:* Tuesday, August 13, 2013 4:22 PM *To:* abrams@google.com; sdelbianco@netchoice.org *Cc:* bc-gnso@icann.org
*Subject:* Re: [bc-gnso] BC comment on singular plural****
** **
Ridiculous.
Sent from Yahoo! Mail for iPhone****
** ** ------------------------------
*From: *Andy Abrams <abrams@google.com>; *To: *Steve DelBianco <sdelbianco@netchoice.org>; *Cc: *bc - GNSO list <bc-gnso@icann.org>; *Subject: *Re: [bc-gnso] BC comment on singular plural *Sent: *Tue, Aug 13, 2013 11:08:58 PM ****
** **
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 *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043*** *
(650) 669-8752 <https://www.google.com/voice#phones>****
** **
-- Andy Abrams | Trademark Counsel *Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752 <https://www.google.com/voice#phones>
I think ICANN should stay out of trademark law.<br/><br/>Sent from Yahoo! Mail for iPhone
This is beyond depressing. Is there anything we can actually do, though? Marie From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of J. Scott Evans Sent: mercredi 14 août 2013 6:39 To: abrams@google.com; mike@rodenbaugh.com Cc: sdelbianco@netchoice.org; bc-gnso@icann.org Subject: Re: [bc-gnso] BC comment on singular plural I think ICANN should stay out of trademark law. Sent from Yahoo! Mail for iPhone _____ From: Andy Abrams <abrams@google.com>; To: Mike Rodenbaugh <mike@rodenbaugh.com>; Cc: J. Scott Evans <jscottevans@yahoo.com>; Steve Delbianco <sdelbianco@netchoice.org>; bc - GNSO list <bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Wed, Aug 14, 2013 3:49:39 AM Hi Mike, Attached are copies of the two decisions. We'll see if the other ICDR cases follow suit, but in these two cases, it seems that a decision was made up front to not find string confusion unless the strings were identical (in which case there is no need to bring an objection) or the strings were symbolic or visual equivalents (e.g., com v. c0m, which does not exist at the top level as far as I know, or unicorn v. unicom, which again, was already placed by ICANN into a contention set). Then it appears that the somewhat tortured reasoning was applied retroactively. If this is the case, then it will literally be impossible to win a string confusion case, and I agree that the entire process is rendered completely superfluous/useless. Andy On Tue, Aug 13, 2013 at 5:07 PM, <icann@rodenbaugh.com <javascript:return> > wrote: That paraphrasing of the reasoning makes it seem like the experts are entirely shirking their duty as independent neutrals, and are making the String Similarity Objection completely superfluous/useless. Andy can you send copies of the decisions please? Or are they posted somewhere? Thanks, Mike Mike Rodenbaugh RODENBAUGH LAW Tel/Fax: +1.415.738.8087 <http://rodenbaugh.com> http://rodenbaugh.com From: owner-bc-gnso@icann.org <javascript:return> [mailto:owner-bc-gnso@icann.org <javascript:return> ] On Behalf Of J. Scott Evans Sent: Tuesday, August 13, 2013 4:22 PM To: abrams@google.com <javascript:return> ; sdelbianco@netchoice.org <javascript:return> Cc: bc-gnso@icann.org <javascript:return> Subject: Re: [bc-gnso] BC comment on singular plural Ridiculous. Sent from Yahoo! Mail for iPhone _____ From: Andy Abrams < <javascript:return> abrams@google.com>; To: Steve DelBianco < <javascript:return> sdelbianco@netchoice.org>; Cc: bc - GNSO list < <javascript:return> bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Tue, Aug 13, 2013 11:08:58 PM 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 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752
Perhaps getting the word out might help. Here's hoping, although I have just kept to the facts and not added any opinions of my own… http://www.stephanevangelder.com/archives/450-Panels-rule-no-confusion-exist... Stéphane Van Gelder Chairman and Managing Director/Fondateur STEPHANE VAN GELDER CONSULTING T (FR): +33 (0)6 20 40 55 89 T (UK): +44 (0)7583 457053 Skype: SVANGELDER www.StephaneVanGelder.com ---------------- Follow us on Twitter: @stephvg and "like" us on Facebook: www.facebook.com/DomainConsultant LinkedIn: fr.linkedin.com/in/domainconsultant/ Le 14 août 2013 à 11:12, "Marie Pattullo" <marie.pattullo@aim.be> a écrit :
This is beyond depressing. Is there anything we can actually do, though? Marie
From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of J. Scott Evans Sent: mercredi 14 août 2013 6:39 To: abrams@google.com; mike@rodenbaugh.com Cc: sdelbianco@netchoice.org; bc-gnso@icann.org Subject: Re: [bc-gnso] BC comment on singular plural
I think ICANN should stay out of trademark law.
Sent from Yahoo! Mail for iPhone
From: Andy Abrams <abrams@google.com>; To: Mike Rodenbaugh <mike@rodenbaugh.com>; Cc: J. Scott Evans <jscottevans@yahoo.com>; Steve Delbianco <sdelbianco@netchoice.org>; bc - GNSO list <bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Wed, Aug 14, 2013 3:49:39 AM
Hi Mike,
Attached are copies of the two decisions. We'll see if the other ICDR cases follow suit, but in these two cases, it seems that a decision was made up front to not find string confusion unless the strings were identical (in which case there is no need to bring an objection) or the strings were symbolic or visual equivalents (e.g., com v. c0m, which does not exist at the top level as far as I know, or unicorn v. unicom, which again, was already placed by ICANN into a contention set). Then it appears that the somewhat tortured reasoning was applied retroactively. If this is the case, then it will literally be impossible to win a string confusion case, and I agree that the entire process is rendered completely superfluous/useless.
Andy
On Tue, Aug 13, 2013 at 5:07 PM, <icann@rodenbaugh.com> wrote: That paraphrasing of the reasoning makes it seem like the experts are entirely shirking their duty as independent neutrals, and are making the String Similarity Objection completely superfluous/useless.
Andy can you send copies of the decisions please? Or are they posted somewhere?
Thanks, Mike
Mike Rodenbaugh RODENBAUGH LAW Tel/Fax: +1.415.738.8087 http://rodenbaugh.com
From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of J. Scott Evans Sent: Tuesday, August 13, 2013 4:22 PM To: abrams@google.com; sdelbianco@netchoice.org Cc: bc-gnso@icann.org
Subject: Re: [bc-gnso] BC comment on singular plural
Ridiculous.
Sent from Yahoo! Mail for iPhone
From: Andy Abrams <abrams@google.com>; To: Steve DelBianco <sdelbianco@netchoice.org>; Cc: bc - GNSO list <bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Tue, Aug 13, 2013 11:08:58 PM
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
This is where the ICANN bottom-up, consensus driven process is truly tested. If, in fact, the BC could gain consensus on this with a number of other constituencies, ALAC and other SOs, the Board would be forced to intervene on the matter and the possibility of reversing these decisions could be within grasp. Devoid of that, Marie, the train has left the station and the debacle has begun. Kind regards, RA Ron Andruff RNA Partners <http://www.rnapartners.com> www.rnapartners.com From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of stephvg@gmail.com Sent: Wednesday, August 14, 2013 05:28 To: Marie Pattullo Cc: 'J. Scott Evans'; abrams@google.com; mike@rodenbaugh.com; sdelbianco@netchoice.org; bc-gnso@icann.org Subject: Re: [bc-gnso] BC comment on singular plural Perhaps getting the word out might help. Here's hoping, although I have just kept to the facts and not added any opinions of my own http://www.stephanevangelder.com/archives/450-Panels-rule-no-confusion-exist s-between-singular-and-plural-strings.html Stéphane Van Gelder Chairman and Managing Director/Fondateur STEPHANE VAN GELDER CONSULTING T (FR): +33 (0)6 20 40 55 89 T (UK): +44 (0)7583 457053 Skype: SVANGELDER www.StephaneVanGelder.com <http://www.stephanevangelder.com/> ---------------- Follow us on Twitter: @stephvg and "like" us on Facebook: www.facebook.com/DomainConsultant <http://www.facebook.com/DomainConsultant> LinkedIn: fr.linkedin.com/in/domainconsultant/ <http://fr.linkedin.com/in/domainconsultant/> Le 14 août 2013 à 11:12, "Marie Pattullo" <marie.pattullo@aim.be <mailto:marie.pattullo@aim.be> > a écrit : This is beyond depressing. Is there anything we can actually do, though? Marie From: owner-bc-gnso@icann.org <mailto:owner-bc-gnso@icann.org> [mailto:owner-bc-gnso@icann.org <mailto:bc-gnso@icann.org> ] On Behalf Of J. Scott Evans Sent: mercredi 14 août 2013 6:39 To: abrams@google.com <mailto:abrams@google.com> ; mike@rodenbaugh.com <mailto:mike@rodenbaugh.com> Cc: sdelbianco@netchoice.org <mailto:sdelbianco@netchoice.org> ; bc-gnso@icann.org <mailto:bc-gnso@icann.org> Subject: Re: [bc-gnso] BC comment on singular plural I think ICANN should stay out of trademark law. Sent from Yahoo! Mail for iPhone _____ From: Andy Abrams < <mailto:abrams@google.com> abrams@google.com>; To: Mike Rodenbaugh < <mailto:mike@rodenbaugh.com> mike@rodenbaugh.com>; Cc: J. Scott Evans < <mailto:jscottevans@yahoo.com> jscottevans@yahoo.com>; Steve Delbianco < <mailto:sdelbianco@netchoice.org> sdelbianco@netchoice.org>; bc - GNSO list < <mailto:bc-gnso@icann.org> bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Wed, Aug 14, 2013 3:49:39 AM Hi Mike, Attached are copies of the two decisions. We'll see if the other ICDR cases follow suit, but in these two cases, it seems that a decision was made up front to not find string confusion unless the strings were identical (in which case there is no need to bring an objection) or the strings were symbolic or visual equivalents (e.g., com v. c0m, which does not exist at the top level as far as I know, or unicorn v. unicom, which again, was already placed by ICANN into a contention set). Then it appears that the somewhat tortured reasoning was applied retroactively. If this is the case, then it will literally be impossible to win a string confusion case, and I agree that the entire process is rendered completely superfluous/useless. Andy On Tue, Aug 13, 2013 at 5:07 PM, < <javascript:return> icann@rodenbaugh.com> wrote: That paraphrasing of the reasoning makes it seem like the experts are entirely shirking their duty as independent neutrals, and are making the String Similarity Objection completely superfluous/useless. Andy can you send copies of the decisions please? Or are they posted somewhere? Thanks, Mike Mike Rodenbaugh RODENBAUGH LAW Tel/Fax: +1.415.738.8087 <http://rodenbaugh.com> http://rodenbaugh.com From: <javascript:return> owner-bc-gnso@icann.org [mailto: <javascript:return> owner-bc-gnso@icann.org] On Behalf Of J. Scott Evans Sent: Tuesday, August 13, 2013 4:22 PM To: <javascript:return> abrams@google.com; <javascript:return> sdelbianco@netchoice.org Cc: <javascript:return> bc-gnso@icann.org Subject: Re: [bc-gnso] BC comment on singular plural Ridiculous. Sent from Yahoo! Mail for iPhone _____ From: Andy Abrams < <javascript:return> abrams@google.com>; To: Steve DelBianco < <javascript:return> sdelbianco@netchoice.org>; Cc: bc - GNSO list < <javascript:return> bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Tue, Aug 13, 2013 11:08:58 PM 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 <http://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 ICANNs 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 < <mailto:sdelbianco@netchoice.org> sdelbianco@netchoice.org> wrote: Here's what we just told the Board at the Public Forum, on behalf of the BC ICANNs 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 Whats 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, theres 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 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752
Without even getting into the substance, if the panelists are just deferring to the earlier 'expert' determinations it raises the question of whether this objection process is in any way meaningful. From: Ron Andruff [mailto:randruff@rnapartners.com] Sent: Wednesday, August 14, 2013 01:16 PM To: 'Marie Pattullo' <marie.pattullo@aim.be> Cc: bc-gnso@icann.org <bc-gnso@icann.org> Subject: RE: [bc-gnso] BC comment on singular plural This is where the ICANN bottom-up, consensus driven process is truly tested. If, in fact, the BC could gain consensus on this with a number of other constituencies, ALAC and other SOs, the Board would be forced to intervene on the matter and the possibility of reversing these decisions could be within grasp. Devoid of that, Marie, the train has left the station and the debacle has begun. Kind regards, RA Ron Andruff RNA Partners www.rnapartners.com<http://www.rnapartners.com> From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of stephvg@gmail.com Sent: Wednesday, August 14, 2013 05:28 To: Marie Pattullo Cc: 'J. Scott Evans'; abrams@google.com; mike@rodenbaugh.com; sdelbianco@netchoice.org; bc-gnso@icann.org Subject: Re: [bc-gnso] BC comment on singular plural Perhaps getting the word out might help. Here's hoping, although I have just kept to the facts and not added any opinions of my own… http://www.stephanevangelder.com/archives/450-Panels-rule-no-confusion-exist... Stéphane Van Gelder Chairman and Managing Director/Fondateur STEPHANE VAN GELDER CONSULTING T (FR): +33 (0)6 20 40 55 89 T (UK): +44 (0)7583 457053 Skype: SVANGELDER www.StephaneVanGelder.com<http://www.stephanevangelder.com/> ---------------- Follow us on Twitter: @stephvg and "like" us on Facebook: www.facebook.com/DomainConsultant<http://www.facebook.com/DomainConsultant> LinkedIn: fr.linkedin.com/in/domainconsultant/<http://fr.linkedin.com/in/domainconsultant/> Le 14 août 2013 à 11:12, "Marie Pattullo" <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> a écrit : This is beyond depressing. Is there anything we can actually do, though? Marie From: owner-bc-gnso@icann.org<mailto:owner-bc-gnso@icann.org> [mailto:owner-bc-gnso@icann.org<mailto:bc-gnso@icann.org>] On Behalf Of J. Scott Evans Sent: mercredi 14 août 2013 6:39 To: abrams@google.com<mailto:abrams@google.com>; mike@rodenbaugh.com<mailto:mike@rodenbaugh.com> Cc: sdelbianco@netchoice.org<mailto:sdelbianco@netchoice.org>; bc-gnso@icann.org<mailto:bc-gnso@icann.org> Subject: Re: [bc-gnso] BC comment on singular plural I think ICANN should stay out of trademark law. Sent from Yahoo! Mail for iPhone ________________________________ From: Andy Abrams <abrams@google.com<mailto:abrams@google.com>>; To: Mike Rodenbaugh <mike@rodenbaugh.com<mailto:mike@rodenbaugh.com>>; Cc: J. Scott Evans <jscottevans@yahoo.com<mailto:jscottevans@yahoo.com>>; Steve Delbianco <sdelbianco@netchoice.org<mailto:sdelbianco@netchoice.org>>; bc - GNSO list <bc-gnso@icann.org<mailto:bc-gnso@icann.org>>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Wed, Aug 14, 2013 3:49:39 AM Hi Mike, Attached are copies of the two decisions. We'll see if the other ICDR cases follow suit, but in these two cases, it seems that a decision was made up front to not find string confusion unless the strings were identical (in which case there is no need to bring an objection) or the strings were symbolic or visual equivalents (e.g., com v. c0m, which does not exist at the top level as far as I know, or unicorn v. unicom, which again, was already placed by ICANN into a contention set). Then it appears that the somewhat tortured reasoning was applied retroactively. If this is the case, then it will literally be impossible to win a string confusion case, and I agree that the entire process is rendered completely superfluous/useless. Andy On Tue, Aug 13, 2013 at 5:07 PM, <icann@rodenbaugh.com<javascript:return>> wrote: That paraphrasing of the reasoning makes it seem like the experts are entirely shirking their duty as independent neutrals, and are making the String Similarity Objection completely superfluous/useless. Andy can you send copies of the decisions please? Or are they posted somewhere? Thanks, Mike Mike Rodenbaugh RODENBAUGH LAW Tel/Fax: +1.415.738.8087 http://rodenbaugh.com From: owner-bc-gnso@icann.org<javascript:return> [mailto:owner-bc-gnso@icann.org<javascript:return>] On Behalf Of J. Scott Evans Sent: Tuesday, August 13, 2013 4:22 PM To: abrams@google.com<javascript:return>; sdelbianco@netchoice.org<javascript:return> Cc: bc-gnso@icann.org<javascript:return> Subject: Re: [bc-gnso] BC comment on singular plural Ridiculous. Sent from Yahoo! Mail for iPhone ________________________________ From: Andy Abrams <abrams@google.com<javascript:return>>; To: Steve DelBianco <sdelbianco@netchoice.org<javascript:return>>; Cc: bc - GNSO list <bc-gnso@icann.org<javascript:return>>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Tue, Aug 13, 2013 11:08:58 PM 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<http://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<mailto: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<https://www.google.com/voice#phones> -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752<https://www.google.com/voice#phones>
J. Scott: That horse has long been out of the barn. The ability for ICANN to effectively grant global trademarks to anyone who successfully registers a domain name has to this point only been a buzzing fly to national PTOs, but with the new gTLD program, the fly has morphed into a dragon. The fact that the technical Internet ignores national boundaries will only lead to even greater stress, some of which -- as in the ICM Registry debate -- we have seen. The balance between enforcing legacy rules and encouraging future innovation will become a standing agenda item for ICANN in general and the BC in particular. We will need to order in lunch! Cheers, Berard --------- Original Message --------- Subject: Re: [bc-gnso] BC comment on singular plural From: "J. Scott Evans" <jscottevans@yahoo.com> Date: 8/13/13 9:39 pm To: "abrams@google.com" <abrams@google.com>, "mike@rodenbaugh.com" <mike@rodenbaugh.com> Cc: "sdelbianco@netchoice.org" <sdelbianco@netchoice.org>, "bc-gnso@icann.org" <bc-gnso@icann.org> I think ICANN should stay out of trademark law. Sent from Yahoo! Mail for iPhone From: Andy Abrams <abrams@google.com>; To: Mike Rodenbaugh <mike@rodenbaugh.com>; Cc: J. Scott Evans <jscottevans@yahoo.com>; Steve Delbianco <sdelbianco@netchoice.org>; bc - GNSO list <bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Wed, Aug 14, 2013 3:49:39 AM Hi Mike, Attached are copies of the two decisions. We'll see if the other ICDR cases follow suit, but in these two cases, it seems that a decision was made up front to not find string confusion unless the strings were identical (in which case there is no need to bring an objection) or the strings were symbolic or visual equivalents (e.g., com v. c0m, which does not exist at the top level as far as I know, or unicorn v. unicom, which again, was already placed by ICANN into a contention set). Then it appears that the somewhat tortured reasoning was applied retroactively. If this is the case, then it will literally be impossible to win a string confusion case, and I agree that the entire process is rendered completely superfluous/useless. Andy On Tue, Aug 13, 2013 at 5:07 PM, <icann@rodenbaugh.com> wrote: That paraphrasing of the reasoning makes it seem like the experts are entirely shirking their duty as independent neutrals, and are making the String Similarity Objection completely superfluous/useless. Andy can you send copies of the decisions please? Or are they posted somewhere? Thanks, Mike Mike Rodenbaugh RODENBAUGH LAW Tel/Fax: +1.415.738.8087 http://rodenbaugh.com From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of J. Scott Evans Sent: Tuesday, August 13, 2013 4:22 PM To: abrams@google.com; sdelbianco@netchoice.org Cc: bc-gnso@icann.org Subject: Re: [bc-gnso] BC comment on singular plural Ridiculous. Sent from Yahoo! Mail for iPhone From: Andy Abrams <abrams@google.com>; To: Steve DelBianco <sdelbianco@netchoice.org>; Cc: bc - GNSO list <bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Tue, Aug 13, 2013 11:08:58 PM 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
Legacy rules and business models are what the digital era eats for breakfast. Look at what mp3s did to the music business, Amazon did to books + retailing, Craigslist did to classified ads (and now Bezos buys the Washington Post with 1% of his net worth). The examples are endless. Trademarks with a narrow geo focus are clashing with a global Net. So trademark law will evolve against the disruption. Meantime, domains are a valuable new form of intangible asset that didn't even exist two decades ago. Fascinating times that will take more than one lunch to work through. From: john@crediblecontext.com [mailto:john@crediblecontext.com] Sent: Wednesday, August 14, 2013 12:49 PM To: J. Scott Evans <jscottevans@yahoo.com>; abrams@google.com <abrams@google.com>; mike@rodenbaugh.com <mike@rodenbaugh.com> Cc: sdelbianco@netchoice.org <sdelbianco@netchoice.org>; bc-gnso@icann.org <bc-gnso@icann.org> Subject: RE: Re: [bc-gnso] BC comment on singular plural J. Scott: That horse has long been out of the barn. The ability for ICANN to effectively grant global trademarks to anyone who successfully registers a domain name has to this point only been a buzzing fly to national PTOs, but with the new gTLD program, the fly has morphed into a dragon. The fact that the technical Internet ignores national boundaries will only lead to even greater stress, some of which -- as in the ICM Registry debate -- we have seen. The balance between enforcing legacy rules and encouraging future innovation will become a standing agenda item for ICANN in general and the BC in particular. We will need to order in lunch! Cheers, Berard --------- Original Message --------- Subject: Re: [bc-gnso] BC comment on singular plural From: "J. Scott Evans" <jscottevans@yahoo.com> Date: 8/13/13 9:39 pm To: "abrams@google.com" <abrams@google.com>, "mike@rodenbaugh.com" <mike@rodenbaugh.com> Cc: "sdelbianco@netchoice.org" <sdelbianco@netchoice.org>, "bc-gnso@icann.org" <bc-gnso@icann.org> I think ICANN should stay out of trademark law. Sent from Yahoo! Mail for iPhone ________________________________ From: Andy Abrams <abrams@google.com>; To: Mike Rodenbaugh <mike@rodenbaugh.com>; Cc: J. Scott Evans <jscottevans@yahoo.com>; Steve Delbianco <sdelbianco@netchoice.org>; bc - GNSO list <bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Wed, Aug 14, 2013 3:49:39 AM Hi Mike, Attached are copies of the two decisions. We'll see if the other ICDR cases follow suit, but in these two cases, it seems that a decision was made up front to not find string confusion unless the strings were identical (in which case there is no need to bring an objection) or the strings were symbolic or visual equivalents (e.g., com v. c0m, which does not exist at the top level as far as I know, or unicorn v. unicom, which again, was already placed by ICANN into a contention set). Then it appears that the somewhat tortured reasoning was applied retroactively. If this is the case, then it will literally be impossible to win a string confusion case, and I agree that the entire process is rendered completely superfluous/useless. Andy On Tue, Aug 13, 2013 at 5:07 PM, <icann@rodenbaugh.com<https://email14.secureserver.net/return>> wrote: That paraphrasing of the reasoning makes it seem like the experts are entirely shirking their duty as independent neutrals, and are making the String Similarity Objection completely superfluous/useless. Andy can you send copies of the decisions please? Or are they posted somewhere? Thanks, Mike Mike Rodenbaugh RODENBAUGH LAW Tel/Fax: +1.415.738.8087 http://rodenbaugh.com From: owner-bc-gnso@icann.org<https://email14.secureserver.net/return> [mailto:owner-bc-gnso@icann.org<https://email14.secureserver.net/return>] On Behalf Of J. Scott Evans Sent: Tuesday, August 13, 2013 4:22 PM To: abrams@google.com<https://email14.secureserver.net/return>; sdelbianco@netchoice.org<https://email14.secureserver.net/return> Cc: bc-gnso@icann.org<https://email14.secureserver.net/return> Subject: Re: [bc-gnso] BC comment on singular plural Ridiculous. Sent from Yahoo! Mail for iPhone ________________________________ From: Andy Abrams <abrams@google.com<https://email14.secureserver.net/return>>; To: Steve DelBianco <sdelbianco@netchoice.org<https://email14.secureserver.net/return>>; Cc: bc - GNSO list <bc-gnso@icann.org<https://email14.secureserver.net/return>>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Tue, Aug 13, 2013 11:08:58 PM 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<https://www.google.com/voice#phones> -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752<https://www.google.com/voice#phones>
This makes no sense(s) and is a complete(s) travesty(ies). Sarah B. Deutsch Vice President & Deputy General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 sarah.b.deutsch@verizon.com From: J. Scott Evans [mailto:jscottevans@yahoo.com] Sent: Tuesday, August 13, 2013 07:21 PM To: abrams@google.com <abrams@google.com>; sdelbianco@netchoice.org <sdelbianco@netchoice.org> Cc: bc-gnso@icann.org <bc-gnso@icann.org> Subject: Re: [bc-gnso] BC comment on singular plural Ridiculous. Sent from Yahoo! Mail for iPhone ________________________________ From: Andy Abrams <abrams@google.com>; To: Steve DelBianco <sdelbianco@netchoice.org>; Cc: bc - GNSO list <bc-gnso@icann.org>; Subject: Re: [bc-gnso] BC comment on singular plural Sent: Tue, Aug 13, 2013 11:08:58 PM 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<javascript:return>> 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<https://www.google.com/voice#phones>
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 <https://www.google.com/voice#phones> (650) 669-8752
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 *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043*** *
(650) 669-8752 <https://www.google.com/voice#phones>****
-- Andy Abrams | Trademark Counsel *Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752 <https://www.google.com/voice#phones>
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 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752
Hi Mari Jo, Well stated on all counts. And yes, I 100% agree with you regarding your first paragraph. I love that we can civilly disagree in the BC on certain issues and be allied on many others. It should never be personal, and the more information and perspectives the better. In any event, I don't think this issue will die anytime soon given the level of interest in the BC as well as the GAC, so I look forward to continuing the dialogue! Best, Andy On Wed, Aug 14, 2013 at 2:56 PM, Mari Jo Keukelaar <mj@johnberryhill.com>wrote:
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 *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043*** *
(650) 669-8752 <https://www.google.com/voice#phones>****
****
** **
-- Andy Abrams | Trademark Counsel *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043*** *
(650) 669-8752 <https://www.google.com/voice#phones>****
-- Andy Abrams | Trademark Counsel *Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752 <https://www.google.com/voice#phones>
+1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com<mailto:abrams@google.com>> wrote: 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<mailto: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<http://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<http://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<http://lawyer.com/> and lawyers.com<http://lawyers.com/> manage to exist under different ownership (along with cars.com/car.com<http://cars.com/car.com>, house.com/houses.com<http://house.com/houses.com> dog.com/dogs.com<http://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> [mailto: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<http://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<mailto: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<https://www.google.com/voice#phones> -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752<https://www.google.com/voice#phones>
Clearly, we all agree that the question of confusing similarity of generic terms is not a trademark matter. I believe that this is supported by what I have been saying. Given our universal agreement on that score, Objectors in string similarity proceedings would have done well not to cite trademark cases in support of their arguments. Trademark law does not support a concept of "confusing similarity" as applied to generic words. Between two brands of dog food whose labels say "dog food" or "food for dogs", there is no principle of trademark law which will posit consumer confusion between brands as to what is inside the can. So if Objectors have used the DuPont or Sleekcraft factor analyses in their objections, it is no surprise that the arguments are being rejected. Someone hired trademark lawyers to argue a case which, as we all agree, is not a trademark issue. The objectors should simply have made the argument that it is self-evident common sense instead of muddying the waters by reference to trademark law. But there again, the objectors would be asking the panelists to make a policy decision, instead of deciding the case in front of them. The problem, as I see it, is that this was not addressed as a policy matter, and we are now expecting the issue to be resolved in a number of one-off decisions which, as I have also said, is no way to formulate policy. We are experiencing a failure on our part as a policy making community, and not a failure of ICANN, the ICC or the panelists. Indeed the GAC has taken an interest in this matter, as they have in relation to regionally geographic terms, to the detriment of a prominent Luxembourg TLD applicant. One might assume that Luxembourg did not have sufficient influence on behalf of their native TLD applicant. Perhaps if that applicant was a native US applicant and taxpayer, the US could have been of more assistance to them, but it is not usually the case that the US government will exert itself on behalf of foreign entities. If we, not only as a supporting organization, but as a community as a whole, rely on the GAC to resolve our policy issues, they may seek to resolve issues of their own. Then we should not be so quick to jump all over them for what we perceive as their failure, as we have done, not only to the GAC but to the panels I have been defending in these posts. Mari Jo From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Smith, Bill Sent: Wednesday, August 14, 2013 7:03 PM To: Andy Abrams Cc: Mari Jo Keukelaar; jscottevans@yahoo.com; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural +1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com> wrote: 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 <http://lawyer.com/> and lawyers.com <http://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 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752
Wow - just when you think you've got some things figured out...So in a complete surprise, we just *won* our pet/pets string confusion objection against Donuts (attached). According to the panel, "The visual similarity and algorithmic score are high, the aural similarity is high, the meaning similarity is high. Objector has met its burden of proof. The cumulative impact of these factors is such that the Expert determines that delegation of <.pet> gTLD and the <.pets> gTLD into the root zone will cause a probability of confusion." So I guess the proceedings aren't superfluous?? We'll see if this is an outlier, or if there will be more of an even split in decisions, which should only add to the confusion and controversy. Never a dull moment... Andy On Thu, Aug 15, 2013 at 11:51 AM, Mari Jo Keukelaar <mj@johnberryhill.com>wrote:
Clearly, we all agree that the question of confusing similarity of generic terms is not a trademark matter. I believe that this is supported by what I have been saying.****
** **
Given our universal agreement on that score, Objectors in string similarity proceedings would have done well not to cite trademark cases in support of their arguments. Trademark law does not support a concept of "confusing similarity" as applied to generic words. Between two brands of dog food whose labels say "dog food" or "food for dogs", there is no principle of trademark law which will posit consumer confusion between brands as to what is inside the can.****
** **
So if Objectors have used the DuPont or Sleekcraft factor analyses in their objections, it is no surprise that the arguments are being rejected. Someone hired trademark lawyers to argue a case which, as we all agree, is not a trademark issue.****
The objectors should simply have made the argument that it is self-evident common sense instead of muddying the waters by reference to trademark law. But there again, the objectors would be asking the panelists to make a policy decision, instead of deciding the case in front of them.****
** **
The problem, as I see it, is that this was not addressed as a policy matter, and we are now expecting the issue to be resolved in a number of one-off decisions which, as I have also said, is no way to formulate policy. We are experiencing a failure on our part as a policy making community, and not a failure of ICANN, the ICC or the panelists.****
** **
Indeed the GAC has taken an interest in this matter, as they have in relation to regionally geographic terms, to the detriment of a prominent Luxembourg TLD applicant. One might assume that Luxembourg did not have sufficient influence on behalf of their native TLD applicant. Perhaps if that applicant was a native US applicant and taxpayer, the US could have been of more assistance to them, but it is not usually the case that the US government will exert itself on behalf of foreign entities.****
** **
If we, not only as a supporting organization, but as a community as a whole, rely on the GAC to resolve our policy issues, they may seek to resolve issues of their own. Then we should not be so quick to jump all over them for what we perceive as their failure, as we have done, not only to the GAC but to the panels I have been defending in these posts.****
** **
Mari Jo****
** **
** **
*From:* owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] *On Behalf Of *Smith, Bill *Sent:* Wednesday, August 14, 2013 7:03 PM *To:* Andy Abrams *Cc:* Mari Jo Keukelaar; jscottevans@yahoo.com; bc - GNSO list
*Subject:* Re: [bc-gnso] BC comment on singular plural****
** **
+1 ****
** **
I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts.****
** **
On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com> wrote:****
****
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 *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043*** *
(650) 669-8752 <https://www.google.com/voice#phones>****
****
** **
-- Andy Abrams | Trademark Counsel *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043 ** **
(650) 669-8752 <https://www.google.com/voice#phones>****
** **
-- Andy Abrams | Trademark Counsel *Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752 <https://www.google.com/voice#phones>
Andy: Congratulations! (sincerely) However, a series of coin tosses is a poor substitute for a definite policy, and whether a process is sound is not determined on subjective assessment of outcomes. Clearly, in any binary dispute system no more than 50% of the participants are satisfied. I agree that conflicting results from such coin tosses will only add to the confusion and controversy. I still maintain, we need a policy, and I'd rather be discussing how we go about getting one at this point. Any ideas? mj From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Andy Abrams Sent: Thursday, August 15, 2013 4:36 PM To: Mari Jo Keukelaar Cc: Smith, Bill; jscottevans@yahoo.com; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural Wow - just when you think you've got some things figured out...So in a complete surprise, we just won our pet/pets string confusion objection against Donuts (attached). According to the panel, "The visual similarity and algorithmic score are high, the aural similarity is high, the meaning similarity is high. Objector has met its burden of proof. The cumulative impact of these factors is such that the Expert determines that delegation of <.pet> gTLD and the <.pets> gTLD into the root zone will cause a probability of confusion." So I guess the proceedings aren't superfluous?? We'll see if this is an outlier, or if there will be more of an even split in decisions, which should only add to the confusion and controversy. Never a dull moment... Andy On Thu, Aug 15, 2013 at 11:51 AM, Mari Jo Keukelaar <mj@johnberryhill.com> wrote: Clearly, we all agree that the question of confusing similarity of generic terms is not a trademark matter. I believe that this is supported by what I have been saying. Given our universal agreement on that score, Objectors in string similarity proceedings would have done well not to cite trademark cases in support of their arguments. Trademark law does not support a concept of "confusing similarity" as applied to generic words. Between two brands of dog food whose labels say "dog food" or "food for dogs", there is no principle of trademark law which will posit consumer confusion between brands as to what is inside the can. So if Objectors have used the DuPont or Sleekcraft factor analyses in their objections, it is no surprise that the arguments are being rejected. Someone hired trademark lawyers to argue a case which, as we all agree, is not a trademark issue. The objectors should simply have made the argument that it is self-evident common sense instead of muddying the waters by reference to trademark law. But there again, the objectors would be asking the panelists to make a policy decision, instead of deciding the case in front of them. The problem, as I see it, is that this was not addressed as a policy matter, and we are now expecting the issue to be resolved in a number of one-off decisions which, as I have also said, is no way to formulate policy. We are experiencing a failure on our part as a policy making community, and not a failure of ICANN, the ICC or the panelists. Indeed the GAC has taken an interest in this matter, as they have in relation to regionally geographic terms, to the detriment of a prominent Luxembourg TLD applicant. One might assume that Luxembourg did not have sufficient influence on behalf of their native TLD applicant. Perhaps if that applicant was a native US applicant and taxpayer, the US could have been of more assistance to them, but it is not usually the case that the US government will exert itself on behalf of foreign entities. If we, not only as a supporting organization, but as a community as a whole, rely on the GAC to resolve our policy issues, they may seek to resolve issues of their own. Then we should not be so quick to jump all over them for what we perceive as their failure, as we have done, not only to the GAC but to the panels I have been defending in these posts. Mari Jo From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Smith, Bill Sent: Wednesday, August 14, 2013 7:03 PM To: Andy Abrams Cc: Mari Jo Keukelaar; jscottevans@yahoo.com; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural +1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com> wrote: 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 <http://lawyer.com/> and lawyers.com <http://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 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752
Unless you're Google, right? j. scott evans - head of global brand, domains & copyright - Yahoo! Inc. - 408.349.1385 - jscottevans@yahoo.com ________________________________ From: Mari Jo Keukelaar <mj@johnberryhill.com> To: "'Smith, Bill'" <bill.smith@paypal-inc.com>; 'Andy Abrams' <abrams@google.com> Cc: jscottevans@yahoo.com; 'bc - GNSO list' <bc-gnso@icann.org> Sent: Thursday, August 15, 2013 11:51 AM Subject: RE: [bc-gnso] BC comment on singular plural Clearly, we all agree that the question of confusing similarity of generic terms is not a trademark matter. I believe that this is supported by what I have been saying. Given our universal agreement on that score, Objectors in string similarity proceedings would have done well not to cite trademark cases in support of their arguments. Trademark law does not support a concept of "confusing similarity" as applied to generic words. Between two brands of dog food whose labels say "dog food" or "food for dogs", there is no principle of trademark law which will posit consumer confusion between brands as to what is inside the can. So if Objectors have used the DuPont or Sleekcraft factor analyses in their objections, it is no surprise that the arguments are being rejected. Someone hired trademark lawyers to argue a case which, as we all agree, is not a trademark issue. The objectors should simply have made the argument that it is self-evident common sense instead of muddying the waters by reference to trademark law. But there again, the objectors would be asking the panelists to make a policy decision, instead of deciding the case in front of them. The problem, as I see it, is that this was not addressed as a policy matter, and we are now expecting the issue to be resolved in a number of one-off decisions which, as I have also said, is no way to formulate policy. We are experiencing a failure on our part as a policy making community, and not a failure of ICANN, the ICC or the panelists. Indeed the GAC has taken an interest in this matter, as they have in relation to regionally geographic terms, to the detriment of a prominent Luxembourg TLD applicant. One might assume that Luxembourg did not have sufficient influence on behalf of their native TLD applicant. Perhaps if that applicant was a native US applicant and taxpayer, the US could have been of more assistance to them, but it is not usually the case that the US government will exert itself on behalf of foreign entities. If we, not only as a supporting organization, but as a community as a whole, rely on the GAC to resolve our policy issues, they may seek to resolve issues of their own. Then we should not be so quick to jump all over them for what we perceive as their failure, as we have done, not only to the GAC but to the panels I have been defending in these posts. Mari Jo From:owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Smith, Bill Sent: Wednesday, August 14, 2013 7:03 PM To: Andy Abrams Cc: Mari Jo Keukelaar; jscottevans@yahoo.com; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural +1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com> wrote: 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
Jay Scott: The decision that Mr. Abrams provided has expressly rejected the TM issues raised (as I have suggested), stating: “The Expert is declining the invitation of the Objector to look to American Trademark or UDRP panel decisions to determine confusing similarity under the new gTLD procedure.” As you, Mr. Smith, and I have agreed, these are not TM disputes and this decision confirms that. I still maintain, we have a policy problem, even if we’re Google. Mari Jo From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of J. Scott Evans Sent: Thursday, August 15, 2013 5:10 PM To: Mari Jo Keukelaar; 'Smith, Bill'; 'Andy Abrams' Cc: 'bc - GNSO list' Subject: Re: [bc-gnso] BC comment on singular plural Unless you're Google, right? j. scott evans - head of global brand, domains & copyright - Yahoo! Inc. - 408.349.1385 - jscottevans@yahoo.com _____ From: Mari Jo Keukelaar <mj@johnberryhill.com> To: "'Smith, Bill'" <bill.smith@paypal-inc.com>; 'Andy Abrams' <abrams@google.com> Cc: jscottevans@yahoo.com; 'bc - GNSO list' <bc-gnso@icann.org> Sent: Thursday, August 15, 2013 11:51 AM Subject: RE: [bc-gnso] BC comment on singular plural Clearly, we all agree that the question of confusing similarity of generic terms is not a trademark matter. I believe that this is supported by what I have been saying. Given our universal agreement on that score, Objectors in string similarity proceedings would have done well not to cite trademark cases in support of their arguments. Trademark law does not support a concept of "confusing similarity" as applied to generic words. Between two brands of dog food whose labels say "dog food" or "food for dogs", there is no principle of trademark law which will posit consumer confusion between brands as to what is inside the can. So if Objectors have used the DuPont or Sleekcraft factor analyses in their objections, it is no surprise that the arguments are being rejected. Someone hired trademark lawyers to argue a case which, as we all agree, is not a trademark issue. The objectors should simply have made the argument that it is self-evident common sense instead of muddying the waters by reference to trademark law. But there again, the objectors would be asking the panelists to make a policy decision, instead of deciding the case in front of them. The problem, as I see it, is that this was not addressed as a policy matter, and we are now expecting the issue to be resolved in a number of one-off decisions which, as I have also said, is no way to formulate policy. We are experiencing a failure on our part as a policy making community, and not a failure of ICANN, the ICC or the panelists. Indeed the GAC has taken an interest in this matter, as they have in relation to regionally geographic terms, to the detriment of a prominent Luxembourg TLD applicant. One might assume that Luxembourg did not have sufficient influence on behalf of their native TLD applicant. Perhaps if that applicant was a native US applicant and taxpayer, the US could have been of more assistance to them, but it is not usually the case that the US government will exert itself on behalf of foreign entities. If we, not only as a supporting organization, but as a community as a whole, rely on the GAC to resolve our policy issues, they may seek to resolve issues of their own. Then we should not be so quick to jump all over them for what we perceive as their failure, as we have done, not only to the GAC but to the panels I have been defending in these posts. Mari Jo From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Smith, Bill Sent: Wednesday, August 14, 2013 7:03 PM To: Andy Abrams Cc: Mari Jo Keukelaar; jscottevans@yahoo.com; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural +1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com> wrote: 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 <http://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 <http://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 <http://lawyer.com/> and lawyers.com <http://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 <http://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 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752
Mari Jo:<br/><br/>I was just teasing Andy. ;-)<br/><br/>Sent from Yahoo! Mail for iPhone
It is worth noting that this discussion is unfortunately referred to as "singular/plural" as a consequence of our Anglo-centrism; even there the discussion does not take into account Germanic plural forms in English - e.g. child/children or other northern European English adoptions like wife/wives or mouse/mice, where the SWORD algorithm would likely fail to pick up enough in the line of similarity to provide some evidence of a likelihood of confusion, let alone something impermissible. I, for one, have never been confused by whether "wife" and "wives" mean two very different things, and I hope I've managed to clearly convey this concept to my husband. As for the subject of what is "common sense," we may all have common sense but we do not have a common language. I would be curious to know what "common sense" dictates, for example, when discussing masculine and feminine forms in Romance languages. In Spanish, chico and chica are as different as night and day. Any boy and girl would tell you the same; they all have cooties. If one doesn't know what "chico" and "chica" mean, however, - which is likely true for the majority of internet users - is the answer, as a policy matter, different? The answer is very different if you speak Spanish, but the "majority language" of internet users is most likely not Spanish, nor is it English. If we are seeking to make policy which is generally applicable to the global internet, does it matter whether "chico" and "chica" mean two different things to one language group, while appearing to be pretty much the same thing for everyone else? If one speaks neither English nor Spanish, "chico" and "chica" probably appear to be more similar than, say, "thing" or "things", which are at least different string lengths. Quite frankly, to me, all of the Arabic, Hebrew and Chinese IDN TLDs look very much alike since I am unfamiliar with those scripts. Given my ignorance, and applying the principle of "I doubt that I am alone," shouldn't we also be asking "confusing to whom?" Unless we are seeking to make a limited policy on "English Nouns With Latinate Plurals" we are going to have to become very cunning linguists indeed, as the next round will find us conjugating verbs and making adverbs out of adjectives while the entire non-English speaking world patiently waits for valuable policy attention to be paid to some issue which might be relevant to them. As with the repeated "what about us?" comments from users of pictographic writing whenever the subject of "single character domains" came up, we should be sensitive to how the "singular/plural issue" is defined, because we are only addressing a subset of English nouns. Is the goal here to devise a general rule addressing "things which are similar across the board" or are we embarking on an exercise which will eventually lead to a policy compendium addressing the peculiarities of every human language, guided by a "common sense" standard? If the latter, that is going to take considerable time and resources. As for "doing the right thing" I am hard pressed to know how to build a policy or a standard around such an ill defined concept. It reminds me of obscenity being something I know when I see it. Mari Jo From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Smith, Bill Sent: Wednesday, August 14, 2013 7:03 PM To: Andy Abrams Cc: Mari Jo Keukelaar; jscottevans@yahoo.com; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural +1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com> wrote: 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 <http://lawyer.com/> and lawyers.com <http://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 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752
Mari Jo, Excellent post. No easy answers… except for ICANN to abandon what has become and will remain a hopelessly complex and expensive transition of the DNS from a taxonomy-based system to a market-based one. Where there was once order, we will now have "competition". "Dot chico" and "dot chica" can compete between themselves and with "dot child", "dot children", and a myriad of semantically similar but linguistically distinct TLDs. In a market-based system this is goodness. It will result in an increased pool of available names. Typically an increase in supply without a commensurate increase in demand results in lower prices. Over time, we may see consolidation of TLDs as competition winnows out the less fortunate in this expansion. We will then have name collisions at the second level which will bring an opportunity for yet more competition and profit making. Regretfully, consumers (in the large) won't really benefit because as a rule they better understand simplicity, order, and stability. Change is not necessarily bad, but it can impact consumers in significant ways, not always positive. For me, "doing the right thing" would have been a rather more orderly expansion of the gTLD space. Given that that train is far out of the station, we are left with how to deal with the complexity of an arbitrary expansion. Part of the complexity in the "current new" system is the policy decision to avoid similarity. Making such decisions requires judgement and weighing a considerable number of factors in order to arrive at a "common sense" decision. ICANN (the community) works best with a smaller number of factors and ICANN (the corp) prefers to make no judgements. If we are committed to the market-based approach, perhaps the best path forward is to ignore similarity altogether and allow the market to decide. I say this only partly in jest given the time we have all invested in this discussion and the apparent arbitrary decisions we are seeing in the English-only singular/plural cases. There seems no point in endlessly debating similarity if in the end an arbitrary decision will be rendered. Better to let the market decide and save everyone a great deal of time. Consumers will eventually settle the matter, at least that's the theory. Bill On Aug 16, 2013, at 10:08 AM, Mari Jo Keukelaar <mj@johnberryhill.com<mailto:mj@johnberryhill.com>> wrote: It is worth noting that this discussion is unfortunately referred to as "singular/plural" as a consequence of our Anglo-centrism; even there the discussion does not take into account Germanic plural forms in English - e.g. child/children or other northern European English adoptions like wife/wives or mouse/mice, where the SWORD algorithm would likely fail to pick up enough in the line of similarity to provide some evidence of a likelihood of confusion, let alone something impermissible. I, for one, have never been confused by whether "wife" and "wives" mean two very different things, and I hope I've managed to clearly convey this concept to my husband. As for the subject of what is "common sense," we may all have common sense but we do not have a common language. I would be curious to know what "common sense" dictates, for example, when discussing masculine and feminine forms in Romance languages. In Spanish, chico and chica are as different as night and day. Any boy and girl would tell you the same; they all have cooties. If one doesn't know what "chico" and "chica" mean, however, - which is likely true for the majority of internet users - is the answer, as a policy matter, different? The answer is very different if you speak Spanish, but the "majority language" of internet users is most likely not Spanish, nor is it English. If we are seeking to make policy which is generally applicable to the global internet, does it matter whether "chico" and "chica" mean two different things to one language group, while appearing to be pretty much the same thing for everyone else? If one speaks neither English nor Spanish, "chico" and "chica" probably appear to be more similar than, say, "thing" or "things", which are at least different string lengths. Quite frankly, to me, all of the Arabic, Hebrew and Chinese IDN TLDs look very much alike since I am unfamiliar with those scripts. Given my ignorance, and applying the principle of “I doubt that I am alone,” shouldn't we also be asking "confusing to whom?" Unless we are seeking to make a limited policy on "English Nouns With Latinate Plurals" we are going to have to become very cunning linguists indeed, as the next round will find us conjugating verbs and making adverbs out of adjectives while the entire non-English speaking world patiently waits for valuable policy attention to be paid to some issue which might be relevant to them. As with the repeated "what about us?" comments from users of pictographic writing whenever the subject of "single character domains" came up, we should be sensitive to how the "singular/plural issue" is defined, because we are only addressing a subset of English nouns. Is the goal here to devise a general rule addressing "things which are similar across the board" or are we embarking on an exercise which will eventually lead to a policy compendium addressing the peculiarities of every human language, guided by a "common sense" standard? If the latter, that is going to take considerable time and resources. As for “doing the right thing” I am hard pressed to know how to build a policy or a standard around such an ill defined concept. It reminds me of obscenity being something I know when I see it. Mari Jo From: owner-bc-gnso@icann.org<mailto:owner-bc-gnso@icann.org> [mailto:owner-bc-gnso@icann.org<mailto:bc-gnso@icann.org>] On Behalf Of Smith, Bill Sent: Wednesday, August 14, 2013 7:03 PM To: Andy Abrams Cc: Mari Jo Keukelaar; jscottevans@yahoo.com<mailto:jscottevans@yahoo.com>; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural +1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com<mailto:abrams@google.com>> wrote: 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<mailto: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<http://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<http://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<http://lawyer.com/> and lawyers.com<http://lawyers.com/> manage to exist under different ownership (along with cars.com/car.com<http://cars.com/car.com>, house.com/houses.com<http://house.com/houses.com> dog.com/dogs.com<http://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> [mailto: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<http://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<mailto: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<https://www.google.com/voice#phones> -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752<https://www.google.com/voice#phones>
I appreciate Mary Jo's analysis as well. The reality is - like or not - as much as the pundits see little dilution in .COM whether 100 or 1000 new gTLDs arrive on the scene, one has to also realize that the English Internet is the global Internet insomuch as English is the unofficial language of business on a global scale. So the problem we are dealing with is an 'English' problem. Which begs the question, how do we - as the stewards of ICANN - find an appropriate solution? I, for one, am very uncomfortable with Bill's last comment (Consumers will eventually settle the matter, at least that's the theory.) Not pushing ICANN to establish policy on this matter is tantamount to tacitly agreeing to force consumers to buy and park names that they have no interest in - or will simply point to their domain (web site) of choice. Wasn't that a problem we were hoping to dispense with by way of opening up the domain space? My two cents. RA Ron Andruff RNA Partners <http://www.rnapartners.com> www.rnapartners.com From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Smith, Bill Sent: Friday, August 16, 2013 13:50 To: Mari Jo Keukelaar Cc: Smith, Bill; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural Mari Jo, Excellent post. No easy answers. except for ICANN to abandon what has become and will remain a hopelessly complex and expensive transition of the DNS from a taxonomy-based system to a market-based one. Where there was once order, we will now have "competition". "Dot chico" and "dot chica" can compete between themselves and with "dot child", "dot children", and a myriad of semantically similar but linguistically distinct TLDs. In a market-based system this is goodness. It will result in an increased pool of available names. Typically an increase in supply without a commensurate increase in demand results in lower prices. Over time, we may see consolidation of TLDs as competition winnows out the less fortunate in this expansion. We will then have name collisions at the second level which will bring an opportunity for yet more competition and profit making. Regretfully, consumers (in the large) won't really benefit because as a rule they better understand simplicity, order, and stability. Change is not necessarily bad, but it can impact consumers in significant ways, not always positive. For me, "doing the right thing" would have been a rather more orderly expansion of the gTLD space. Given that that train is far out of the station, we are left with how to deal with the complexity of an arbitrary expansion. Part of the complexity in the "current new" system is the policy decision to avoid similarity. Making such decisions requires judgement and weighing a considerable number of factors in order to arrive at a "common sense" decision. ICANN (the community) works best with a smaller number of factors and ICANN (the corp) prefers to make no judgements. If we are committed to the market-based approach, perhaps the best path forward is to ignore similarity altogether and allow the market to decide. I say this only partly in jest given the time we have all invested in this discussion and the apparent arbitrary decisions we are seeing in the English-only singular/plural cases. There seems no point in endlessly debating similarity if in the end an arbitrary decision will be rendered. Better to let the market decide and save everyone a great deal of time. Consumers will eventually settle the matter, at least that's the theory. Bill On Aug 16, 2013, at 10:08 AM, Mari Jo Keukelaar <mj@johnberryhill.com <mailto:mj@johnberryhill.com> > wrote: It is worth noting that this discussion is unfortunately referred to as "singular/plural" as a consequence of our Anglo-centrism; even there the discussion does not take into account Germanic plural forms in English - e.g. child/children or other northern European English adoptions like wife/wives or mouse/mice, where the SWORD algorithm would likely fail to pick up enough in the line of similarity to provide some evidence of a likelihood of confusion, let alone something impermissible. I, for one, have never been confused by whether "wife" and "wives" mean two very different things, and I hope I've managed to clearly convey this concept to my husband. As for the subject of what is "common sense," we may all have common sense but we do not have a common language. I would be curious to know what "common sense" dictates, for example, when discussing masculine and feminine forms in Romance languages. In Spanish, chico and chica are as different as night and day. Any boy and girl would tell you the same; they all have cooties. If one doesn't know what "chico" and "chica" mean, however, - which is likely true for the majority of internet users - is the answer, as a policy matter, different? The answer is very different if you speak Spanish, but the "majority language" of internet users is most likely not Spanish, nor is it English. If we are seeking to make policy which is generally applicable to the global internet, does it matter whether "chico" and "chica" mean two different things to one language group, while appearing to be pretty much the same thing for everyone else? If one speaks neither English nor Spanish, "chico" and "chica" probably appear to be more similar than, say, "thing" or "things", which are at least different string lengths. Quite frankly, to me, all of the Arabic, Hebrew and Chinese IDN TLDs look very much alike since I am unfamiliar with those scripts. Given my ignorance, and applying the principle of "I doubt that I am alone," shouldn't we also be asking "confusing to whom?" Unless we are seeking to make a limited policy on "English Nouns With Latinate Plurals" we are going to have to become very cunning linguists indeed, as the next round will find us conjugating verbs and making adverbs out of adjectives while the entire non-English speaking world patiently waits for valuable policy attention to be paid to some issue which might be relevant to them. As with the repeated "what about us?" comments from users of pictographic writing whenever the subject of "single character domains" came up, we should be sensitive to how the "singular/plural issue" is defined, because we are only addressing a subset of English nouns. Is the goal here to devise a general rule addressing "things which are similar across the board" or are we embarking on an exercise which will eventually lead to a policy compendium addressing the peculiarities of every human language, guided by a "common sense" standard? If the latter, that is going to take considerable time and resources. As for "doing the right thing" I am hard pressed to know how to build a policy or a standard around such an ill defined concept. It reminds me of obscenity being something I know when I see it. Mari Jo From: owner-bc-gnso@icann.org <mailto:owner-bc-gnso@icann.org> [mailto:owner-bc-gnso@icann.org <mailto:bc-gnso@icann.org> ] On Behalf Of Smith, Bill Sent: Wednesday, August 14, 2013 7:03 PM To: Andy Abrams Cc: Mari Jo Keukelaar; jscottevans@yahoo.com <mailto:jscottevans@yahoo.com> ; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural +1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams < <mailto:abrams@google.com> abrams@google.com> wrote: 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 < <mailto:mj@johnberryhill.com> 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. <http://TireDiscounter.com> 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 <http://Defaultdata.com> 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 <http://lawyer.com/> lawyer.com and <http://lawyers.com/> lawyers.com manage to exist under different ownership (along with <http://cars.com/car.com> cars.com/car.com, <http://house.com/houses.com> house.com/houses.com <http://dog.com/dogs.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: <mailto:owner-bc-gnso@icann.org> owner-bc-gnso@icann.org [mailto: <mailto:owner-bc-gnso@icann.org> 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. <http://Booking.com> 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 < <mailto:sdelbianco@netchoice.org> 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 <https://www.google.com/voice#phones> (650) 669-8752 -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 <https://www.google.com/voice#phones> (650) 669-8752
I agree. I'm not really comfortable letting consumers decide. However, by attempting to make these "similarity" judgements, ICANN is introducing complexity into an already overly complex system. As an engineer (computer scientist) I see this as akin to catching a design flaw during testing or after shipment. It's really expensive to correct an error that could have been avoided by better/different design. In the case of the new gTLD program, a fundamental aspect of the program is choice and availability of (largely) unrestricted strings. The Community was surprised by the number of applications, perhaps by an order of magnitude. This has stressed a system/process that would have found it difficult to handle even a few hundred new names. But here we are. If ICANN is going to make rational, reasoned decisions regarding similarities, etc., it almost certainly will need to slow down and consider "similarity" in a broader sense. Mary Jo's list would be a good starting point but I doubt it represents a complete list of considerations. The new gTLD program fundamentally morphs the DNS from a taxonomy to a market. If that wasn't obvious before, it should be now. Our struggles with this new market come not from its competitive nature but rather how best to "regulate" an otherwise open market in order to ensure the greatest good internationally. I don't have a good answer for how to accommodate GAC advice, address similarity concerns, or any of a host of other issues that will no doubt arise in the future. If the new gTLD program follows a traditional technology curve, we may will see 25,000 or more applications in the second round. With no limitations on what can be applied for, that's a distinct possibility in my mind. On Aug 16, 2013, at 12:40 PM, "J. Scott Evans" <jscottevans@yahoo.com<mailto:jscottevans@yahoo.com>> wrote: I think Ron makes some valuable points. Sent from Yahoo! Mail for iPhone ________________________________ From: Ron Andruff <randruff@rnapartners.com<mailto:randruff@rnapartners.com>>; To: 'Smith, Bill' <bill.smith@paypal-inc.com<mailto:bill.smith@paypal-inc.com>>; 'Mari Jo Keukelaar' <mj@johnberryhill.com<mailto:mj@johnberryhill.com>>; Cc: 'bc - GNSO list' <bc-gnso@icann.org<mailto:bc-gnso@icann.org>>; Subject: RE: [bc-gnso] BC comment on singular plural Sent: Fri, Aug 16, 2013 7:05:05 PM I appreciate Mary Jo’s analysis as well. The reality is – like or not – as much as the pundits see little dilution in .COM whether 100 or 1000 new gTLDs arrive on the scene, one has to also realize that the English Internet is the global Internet insomuch as English is the unofficial language of business on a global scale. So the problem we are dealing with is an ‘English’ problem. Which begs the question, how do we – as the stewards of ICANN – find an appropriate solution? I, for one, am very uncomfortable with Bill’s last comment (Consumers will eventually settle the matter, at least that's the theory.) Not pushing ICANN to establish policy on this matter is tantamount to tacitly agreeing to force consumers to buy and park names that they have no interest in – or will simply point to their domain (web site) of choice. Wasn’t that a problem we were hoping to dispense with by way of opening up the domain space? My two cents… RA Ron Andruff RNA Partners www.rnapartners.com<http://www.rnapartners.com/> From: owner-bc-gnso@icann.org<mailto:owner-bc-gnso@icann.org> [mailto:owner-bc-gnso@icann.org<mailto:bc-gnso@icann.org>] On Behalf Of Smith, Bill Sent: Friday, August 16, 2013 13:50 To: Mari Jo Keukelaar Cc: Smith, Bill; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural Mari Jo, Excellent post. No easy answers… except for ICANN to abandon what has become and will remain a hopelessly complex and expensive transition of the DNS from a taxonomy-based system to a market-based one. Where there was once order, we will now have "competition". "Dot chico" and "dot chica" can compete between themselves and with "dot child", "dot children", and a myriad of semantically similar but linguistically distinct TLDs. In a market-based system this is goodness. It will result in an increased pool of available names. Typically an increase in supply without a commensurate increase in demand results in lower prices. Over time, we may see consolidation of TLDs as competition winnows out the less fortunate in this expansion. We will then have name collisions at the second level which will bring an opportunity for yet more competition and profit making. Regretfully, consumers (in the large) won't really benefit because as a rule they better understand simplicity, order, and stability. Change is not necessarily bad, but it can impact consumers in significant ways, not always positive. For me, "doing the right thing" would have been a rather more orderly expansion of the gTLD space. Given that that train is far out of the station, we are left with how to deal with the complexity of an arbitrary expansion. Part of the complexity in the "current new" system is the policy decision to avoid similarity. Making such decisions requires judgement and weighing a considerable number of factors in order to arrive at a "common sense" decision. ICANN (the community) works best with a smaller number of factors and ICANN (the corp) prefers to make no judgements. If we are committed to the market-based approach, perhaps the best path forward is to ignore similarity altogether and allow the market to decide. I say this only partly in jest given the time we have all invested in this discussion and the apparent arbitrary decisions we are seeing in the English-only singular/plural cases. There seems no point in endlessly debating similarity if in the end an arbitrary decision will be rendered. Better to let the market decide and save everyone a great deal of time. Consumers will eventually settle the matter, at least that's the theory. Bill On Aug 16, 2013, at 10:08 AM, Mari Jo Keukelaar <mj@johnberryhill.com<javascript:return>> wrote: It is worth noting that this discussion is unfortunately referred to as "singular/plural" as a consequence of our Anglo-centrism; even there the discussion does not take into account Germanic plural forms in English - e.g. child/children or other northern European English adoptions like wife/wives or mouse/mice, where the SWORD algorithm would likely fail to pick up enough in the line of similarity to provide some evidence of a likelihood of confusion, let alone something impermissible. I, for one, have never been confused by whether "wife" and "wives" mean two very different things, and I hope I've managed to clearly convey this concept to my husband. As for the subject of what is "common sense," we may all have common sense but we do not have a common language. I would be curious to know what "common sense" dictates, for example, when discussing masculine and feminine forms in Romance languages. In Spanish, chico and chica are as different as night and day. Any boy and girl would tell you the same; they all have cooties. If one doesn't know what "chico" and "chica" mean, however, - which is likely true for the majority of internet users - is the answer, as a policy matter, different? The answer is very different if you speak Spanish, but the "majority language" of internet users is most likely not Spanish, nor is it English. If we are seeking to make policy which is generally applicable to the global internet, does it matter whether "chico" and "chica" mean two different things to one language group, while appearing to be pretty much the same thing for everyone else? If one speaks neither English nor Spanish, "chico" and "chica" probably appear to be more similar than, say, "thing" or "things", which are at least different string lengths. Quite frankly, to me, all of the Arabic, Hebrew and Chinese IDN TLDs look very much alike since I am unfamiliar with those scripts. Given my ignorance, and applying the principle of “I doubt that I am alone,” shouldn't we also be asking "confusing to whom?" Unless we are seeking to make a limited policy on "English Nouns With Latinate Plurals" we are going to have to become very cunning linguists indeed, as the next round will find us conjugating verbs and making adverbs out of adjectives while the entire non-English speaking world patiently waits for valuable policy attention to be paid to some issue which might be relevant to them. As with the repeated "what about us?" comments from users of pictographic writing whenever the subject of "single character domains" came up, we should be sensitive to how the "singular/plural issue" is defined, because we are only addressing a subset of English nouns. Is the goal here to devise a general rule addressing "things which are similar across the board" or are we embarking on an exercise which will eventually lead to a policy compendium addressing the peculiarities of every human language, guided by a "common sense" standard? If the latter, that is going to take considerable time and resources. As for “doing the right thing” I am hard pressed to know how to build a policy or a standard around such an ill defined concept. It reminds me of obscenity being something I know when I see it. Mari Jo From: owner-bc-gnso@icann.org<javascript:return> [mailto:owner-bc-gnso@icann.org<javascript:return>] On Behalf Of Smith, Bill Sent: Wednesday, August 14, 2013 7:03 PM To: Andy Abrams Cc: Mari Jo Keukelaar; jscottevans@yahoo.com<javascript:return>; bc - GNSO list Subject: Re: [bc-gnso] BC comment on singular plural +1 I don't see this as a trademark issue. Rather it is an issue of common sense and "doing the right thing". It seems we lose on both counts. On Aug 14, 2013, at 1:34 PM, Andy Abrams <abrams@google.com<javascript:return>> wrote: 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<javascript:return>> 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<http://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<http://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<http://lawyer.com/> and lawyers.com<http://lawyers.com/> manage to exist under different ownership (along with cars.com/car.com<http://cars.com/car.com>, house.com/houses.com<http://house.com/houses.com> dog.com/dogs.com<http://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<javascript:return> [mailto:owner-bc-gnso@icann.org<javascript:return>] 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<http://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<javascript:return>> 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<https://www.google.com/voice#phones> -- Andy Abrams | Trademark Counsel Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752<https://www.google.com/voice#phones>
Bill, <br/><br/>Good points.<br/><br/>J. Scott<br/><br/>Sent from Yahoo! Mail for iPhone
Appreciate the comprehensive review of relevant past decisions. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VLawDC "Luck is the residue of design" -- Branch Rickey Sent from my iPad On Aug 14, 2013, at 4:14 PM, "Mari Jo Keukelaar" <mj@johnberryhill.com<mailto: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<http://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<http://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<http://lawyer.com> and lawyers.com<http://lawyers.com> manage to exist under different ownership (along with cars.com/car.com<http://cars.com/car.com>, house.com/houses.com<http://house.com/houses.com> dog.com/dogs.com<http://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> [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<http://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<mailto: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<https://www.google.com/voice#phones>
participants (13)
-
Andy Abrams -
Deutsch, Sarah B -
Gabriela Szlak -
icann＠rodenbaugh.com -
J. Scott Evans -
john＠crediblecontext.com -
Mari Jo Keukelaar -
Marie Pattullo -
Phil Corwin -
Ron Andruff -
Smith, Bill -
stephvg＠gmail.com -
Steve DelBianco