[bc-gnso] BC comment on singular plural

[Andy Abrams]

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 at 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 at icann.org [mailto:owner-bc-gnso at icann.org] *On
> Behalf Of *Andy Abrams
> *Sent:* Wednesday, August 14, 2013 4:34 PM
> *To:* Mari Jo Keukelaar
> *Cc:* jscottevans at 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 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, 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 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 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 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*.****
>
> -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>
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