[bc-gnso] BC comment on singular plural

Wed Aug 14 17:37:09 UTC 2013

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 at crediblecontext.com [mailto:john at crediblecontext.com]
Sent: Wednesday, August 14, 2013 12:49 PM
To: J. Scott Evans <jscottevans at yahoo.com>; abrams at google.com <abrams at google.com>; mike at rodenbaugh.com <mike at rodenbaugh.com>
Cc: sdelbianco at netchoice.org <sdelbianco at netchoice.org>; bc-gnso at icann.org <bc-gnso at 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 at yahoo.com>
Date: 8/13/13 9:39 pm
To: "abrams at google.com" <abrams at google.com>, "mike at rodenbaugh.com" <mike at rodenbaugh.com>
Cc: "sdelbianco at netchoice.org" <sdelbianco at netchoice.org>, "bc-gnso at icann.org" <bc-gnso at icann.org>

I think ICANN should stay out of trademark law.

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________________________________
From: Andy Abrams <abrams at google.com>;
To: Mike Rodenbaugh <mike at rodenbaugh.com>;
Cc: J. Scott Evans <jscottevans at yahoo.com>; Steve Delbianco <sdelbianco at netchoice.org>; bc - GNSO list <bc-gnso at 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 at 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 at icann.org<https://email14.secureserver.net/return> [mailto:owner-bc-gnso at icann.org<https://email14.secureserver.net/return>] On Behalf Of J. Scott Evans
Sent: Tuesday, August 13, 2013 4:22 PM
To: abrams at google.com<https://email14.secureserver.net/return>; sdelbianco at netchoice.org<https://email14.secureserver.net/return>
Cc: bc-gnso at icann.org<https://email14.secureserver.net/return>

Subject: Re: [bc-gnso] BC comment on singular plural

Ridiculous.

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________________________________
From: Andy Abrams <abrams at google.com<https://email14.secureserver.net/return>>;
To: Steve DelBianco <sdelbianco at netchoice.org<https://email14.secureserver.net/return>>;
Cc: bc - GNSO list <bc-gnso at 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 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
(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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