[bc-gnso] BC comment on singular plural

Phil Corwin psc at vlaw-dc.com
Wed Aug 14 21:30:09 UTC 2013

Appreciate the comprehensive review of relevant past decisions.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004

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 at johnberryhill.com<mailto:mj at 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 at icann.org<mailto:owner-bc-gnso at icann.org> [mailto:owner-bc-gnso at 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.


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