Internet Allowed Only One Pet. What Would the SPCA Say?
As reported earlier, in the first three decisions by the International Center for Dispute Resolution (ICDR) on whether singular and plural versions of the same word might cause confusion if operated as separate top-level domains (gTLDs), e.g., .car vs. .cars, three “Sole Experts” at ICDR answered with a resounding “NO”: both the singular and plural can co-exist. Party of We took exception to the decisions, baffled by the illogical arguments supporting them, consistent opposite opinions of recognized trademark experts (Thomas McCarthy: “…any difference between singular and plural versions of a word, will be minimal, meaning that they willusually be treated as nearly identical or at least having the same overall commercial impression.”) and contrary advice from the Government Advisory Committee (GAC) — part of the International Corporation for Assigned Names and Numbers (ICANN). As a result, someday soon, we may see .car and .cars, .hotel and .hotels, and .tv and .tvs as co-existing gTLDs.
No sooner than one day after the 3-0 sweep by plural over singular, Richard Page, a fourth Sole Expert to look at the plural vs. singular issue ruled that .pet and .pets would cause confusion on the Internet if they shared gTLD space. He dismissed the application for .pets filed by John Island, LLC (owned by Donuts Inc.) over the objection of the applicant for .pet (Google-owned Charleston Road Registry Inc.). There is a lot at stake. Google and Donuts reportedly applied for a combined 408 new gTLDs (Google: 101; Donuts: 307), representing over 23% of the applications (excluding applications for geographic name applications and Internationalized Domain Names or domains in scripts such as Arabic, Chinese, and Cyrillic). That’s why it’s important to closely monitor the Google and Donuts battles over domain name exclusivity.
This all begs the question: what makes a pet (in the singular) so unique that the plural is banned? Sole Expert Page believes it comes down to three principles – similarity in visual appearance, similarity in aural or phonetic sound, and similarity in meaning. In pertinet part, he addresses each separately.
1. Similarity in Visual Appearance
“The words are identical, but for the mere addition of the letter “s” and resultant pluralization. …
“It is probable that Internet users and consumers will glance at email addresses, such as email@example.com and firstname.lastname@example.org and confuse the two TLDs. Such confusion will only invite spoofing and other phishing attacks. …”
2. Similarity in Aural or Phonetic Sound
“The term “pet” is pronounced as it is spelled, “pet.” See Dicitonary.com definition. The term “pets” is likewise pronounced as “pets” in essentially a phonetically equivalent fashion. The terms each have only one syllable, and they have the same stress pattern, with primary accent on the initial “pe” portion of the words. …
“This fact is sufficient to establish that the <.pets> gTLD is likely to result in string confusion, and thus likely to deceive or cause confusion about the gTLDs in the mind of the average, reasonable Internet user. ….
“In addition, similarity of sound is particularly important when goods or services are the type frequently purchase by verbal order – such as pet food, pet toys, pet training and other pet-related goods and services that are often advertised over the radio or television and purchased over the Internet. …
“It is probable that internet users and consumers will be informed of an email address, such as email@example.com and firstname.lastname@example.org, and will confuse the two TLDs. It is also probable that Internet users and consumer will hear advertisements on radio, television and other media, such as “Buy toys for your pet at TOYS.PET,” and “Adopt toy-sized pets at TOYS.PETS,” only to confuse the two TLDs.”
3. Similarity in Meaning
“There is no material difference in commercial meaning between the terms “pet” and “pets” or the <.pet> and <.pets> gTLDs. …
“Objector’s position is that there is nothing about the imaginable uses and meanings of Applicant’s <.pets> gTLD that might differentiate it from Objector’s <.pet> gTLD. Nor can it reasonably be argued there is some dissimilar meaning. The words “pet” and “pets” both relate to the pet animal sector. Applicant provides no explanation as to the purpose of its <.pets> gTLD, but it can easily be presumed to be intended for pet animal-related content as there is no other obvious.”
Thus, according to Page, it all comes down to appearance, sound, and meaning. Pretty simple and logical. Now apply those standards to the previous singular vs. plural battles: .car vs. .cars, .hotel vs. .hotel, and .tv vs. .tvs.
Without question, .car(s) and .hotel(s) cannot coexist under Page’s analysis in .pet(s). Every conclusion he made in rejecting .pets equally applies to the plurals, .cars and .hotels. The Sole Experts in both .car(s) and .hotel(s) failed to apply or elucidate the issues as thoroughly as Page did in .pet(s). In short, they were wrong.
That may not be the case, however, with regard to .tv(s). In that case, .tv and .tvs are intended to be top-level domains for entirely different subject matters. .tv is a country code (ccTLD) for Tuvalu, an island nation in the Pacific. The registry for .tv has sold TLDs to anyone but historically describes itself as “the domain for Web video.” Unlike .tv, .tvs operates primarily in the automotive industry. So unlike .hotel(s) and .car(s), while there might be confusion caused by typing the wrong gTLD (.tv vs. .tvs), upon arriving, the user will immediately know he or she is not where they want to be.
This leaves us with decisions in identical markets permitting singular and plural gTLDs (.hotel(s) and .car(s)) and one rejecting singular and plural gTLDs (.pet(s)). The conflict needs to be resolved. Presumably, this can be achieved through the appellate process within the string confusion resolution rules of ICANN and the ICDR.
Wrong. There is no right to appeal the decision of ICDR’s Sole Expert. It’s final. As Akram Atallah, recently named president of ICANN’s Generic Domains Division said in an interview with Domain Incite, “When an applicant loses an objection, basically their application will not proceed any further. We would like to see them withdraw their application and therefore finish the issue.”
By definition this permits inconsistent rulings with meaningless guidance – other than it all depends on who one draws as its Sole Expert.
But if a loser were to sue a winner in a court somewhere in the world and prevail, Mr. Atallah acknowledges that, “If they have to go outside and take legal action then the outcome of the legal action will be enforceable by law and we will have to abide by it.”
Really? What about the myriad of arguments over jurisdiction and venue, fairness, comity and enforcement, etc., etc. that will undoubtedly cloud such lawsuits, particularly if they’re between litigants based in different countries? We may not have to wait very long to find out how that works out. As reported on Domain Name Wire, “Del Monte International GmbH has sued Del Monte Corporation in U.S. District Court in California in a trademark infringement …. [T]he dispute is clearly related to the plaintiff’s application for the .delmonte top level domain name. … Del Monte Corporation won a Legal Rights Objection against Del Monte International’s application for the .delmonte top level domain name …”. The Del Monte case, however, does not arise from a loss before the ICDR but from another process before the World Intellectual Property Organization (WIPO), an arm of the United Nations (UN). WIPO is recognized by ICANN as an approved domain name dispute resolution forum. Nonetheless, it presents interesting issues surrounding jurisdiction, venue, and enforcement.
But wait. There’s more. When pressed by Domain Incite, Mr. Atallah admitted, “Of course, as with anything ICANN, they have some other avenues for asking for reconsidering the decision, … Basically, going to the Ombudsman, filing a Reconsideration Request, or even lobbying the board or something.”
Wonderful. “… [W]ith anything ICANN … they have avenues … even lobbying the board or something.”
So the solution is to go back into the bureaucratic morass that spawned the problem in the first place. Hardly a swift or independent forum.
Bottom line: Yet another poorly structured ICANN process that produces confusion, not resolution.
Party of We Expert, Doug Wood