[bc-gnso] BC comment on singular plural

J. Scott Evans jscottevans at yahoo.com
Thu Aug 15 21:10:27 UTC 2013

Unless you're Google, right?
j. scott evans -  head of global brand, domains & copyright - Yahoo! Inc. - 408.349.1385 - jscottevans at yahoo.com

 From: Mari Jo Keukelaar <mj at johnberryhill.com>
To: "'Smith, Bill'" <bill.smith at paypal-inc.com>; 'Andy Abrams' <abrams at google.com> 
Cc: jscottevans at yahoo.com; 'bc - GNSO list' <bc-gnso at 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 at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of Smith, Bill
Sent: Wednesday, August 14, 2013 7:03 PM
To: Andy Abrams
Cc: Mari Jo Keukelaar; jscottevans at yahoo.com; bc - GNSO list
Subject: Re: [bc-gnso] BC comment on singular plural
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 at 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...
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.
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.
-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
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