[bc-gnso] BC comment on singular plural

Wed Aug 14 21:56:39 UTC 2013

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
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

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