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ICANN Dispute Resolution Partner Believes Confuse isn’t Confusing with Confuses. Get it?

One of the hottest debates among ICANNistas centers on so-called “string confusion” and how it impacts release of the new generic top-level domains (gTLDs) the Internet Counsel for Assigned Names and Numbers (ICANN) is about to release on the Internet.  An example of string confusion might be .car vs. .cars, the operative word being “might” (more on that later).  The theory goes that if someone types in what they think is the top-level domain for car enthusiasts, they might not understand that .car is different than .cars and thereby be confused.

The International Centre for Dispute Resolution (ICDR), the international branch of the American Arbitration Association (AAA), is a “not-for-profit organization … [that] has a long history and experience in the field of alternative dispute resolution, providing services to individuals and organizations who wish to resolve conflicts out of court.”   It is the job of the ICDR, in partnership with ICANN, to adjudicate potential for consumer confusion in top-level domain applications that while not identical are nonetheless too similar to allow.

The ICDR just released its first twelve decisions, leaving 51 open cases on its docket that deal with string confusion.  The decisions fell into three general “buckets”:

Objections by Owners of Existing gTLDs Alleging String Confusion:

1.  Verisign objected to applications for .vet (Wild Dale, LLC, part of Donuts, Inc.  ), .nec (NEC Corporation), .pet (Charleston Road Registry, Inc.), and .new (Charleston Road Registry, Inc.) as confusing in juxtaposition to .net.

2.  Neustar, owner of .biz, objected to the application for .gbiz (Charleston Road Registry, Inc.) as confusing in juxtaposition to .biz;

3.  Verisign Switzerland, owner of .tv, objected to the application for .itv (ITV Services Limited) as confusing in juxtaposition to .tv; and

4.  Universal Postal Union, owner of .post, objected to the application for .epost (Deutsche Post AG) as confusing in juxtaposition to .post.

Objections Between Applicants of Singular vs. Plural Versions of the Same Word:

1.  .hotel applicant Hotel Top-Level Domain S.a.r.l objected to .hotels applicant Booking.com B.V.;

2.  .tv gTLD owner Verisign Switzerland objected to .tvs applicant T V Sundram Iyengar & Sons Limited; and

3.  .car applicant Charleston Road Registry (subsidiary of Google) objected to .cars applicant Koko Castle, LLC.

Applications Dealing with Country or Company Concerns:

1.  The Government of Montenegro, owner of .me, objected to Charleston Road Registry’s application for .meme; and

2.  Merck & Co., Inc., owner of many trademarks for “merck”, objected to Merck KGaA’s application for .emerck.

This blog addresses issues surrounding plural vs. singular applications for the same word.

Interestingly, ICANN has not placed plural vs. singular strings automatically in its “contentious” string bin.  So unless someone objects, there can be a plural and singular top-level domain with the same word.  At last report, those potentials applications were: .accountant(s), .auto(s), career(s), .car(s), .coupon(s), .cruise(s), .deal(s), .fan(s), .game(s), .gift(s), .home(s), .hotel(s), .kid(s), .loan(s), .market(s), .new(s), .pet(s), .photo(s), .review(s), .sport(s), .tour(s), .tv(s), .web(s) and .work(s).

Many consider singular vs. plural a no-brainer.  They cannot coexist without creating confusion.  At least that’s what ICANN’s Government Affairs Committee (GAC) reported on 11 April 2013: “… The GAC believes that singular and plural versions of the string as a TLD could lead to potential consumer confusion. Therefore the GAC advises the ICANN Board to … [r]econsider its decision to allow singular and plural versions of the same strings.”  Can’t get much clearer than that.

ICANN’s response has been silence and the current allowance of singular and plural versions of the same word remains subject only to a challenge by someone who objects.  Hotel Top-Level Domain S.a.r.l (.hotel(s)), Verisign (.tv(s)), and Charleston Road Registry (.car(s)) filed formal objections.

In what can only be described as bazaar, the ICDR dismissed all three cases allowing singular and plural gTLDs using .car(s), .hotel(s) and .tv(s).

The Verisign decision is particularly interesting.  After four pages of procedural rulings of little or no importance to the merits of the case, Stephen S. Strick the “Sole Expert Panelist” finds that Verisign did not meet the burden of proof required to win.  He did, however, note, “…that while the co-existence of the two TLDs that are the subject of this proceeding may result in confusion by users, [Verisign] has failed to meet its burden of proof to establish the likelihood or probability that users will be confused.”  Amazing how a single “expert panelist” has such insight into the distinctions between “may”, “likelihood”, and “probability”.  Such intellect; such power!  But I guess Sole Expert Panelist Strick prefers the wait and see approach.  That’s an interesting idea.  Using that approach, perhaps we can save a lot of taxpayer money and wait to install stop signs and traffic lights until enough accidents occur to prove they’re needed at an intersection.

On the other hand, Sole Expert Panelist Strick also noted that he was persuaded in denying Verisign’s objection because T V Sundram presented evidence of the “longevity of the TVS brand, the limited nature of the gTLD’s intended use, the dissimilarity of the good and services associated respectively with the two strings, i.e., TVS’s association with automobile products, the fact that TVS’s brand is associated with capital letters (whereas [Verisign’s] .tv is in lower case), the fact that TVS is well known and associated with its company’s brands, the lengthy market interface and long historical co-existence of TVS and tv without evidence of confusion in the market-place.”  That argument would seem to support the cases for famous trademark owners that have applied for gTLDs for those trademarks.  Not good news to the ICANNistas committed to trademark destruction.  Unfortunately, that’s another “maybe” based upon ICANN’s track record with tradmarks.

Most alarming was that all twelve decisions on string confusion rejected the objections.  Not one objector won.  So it was a bad day for Verisign.  It went 0 for 6.  For Google’s Charleston Road Registry, it was a pretty good day.  While it lost to Koko Castle (.car vs. .cars), it beat the objections of the Government of Montenegro (.me vs. .meme), Verisign (twice –.new vs. .net and .pet vs. .net) and Neustar (.gbiz vs. .biz).

All this has to make the remaining 51 objectors a wee bit concerned.  But certainly not confused.

 

We Expert, Doug Wood

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We Expert Doug Wood had written 40 articles for Party of We

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