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

[john@xxxxxxxxxxxxxxxxxxx]

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@xxxxxxxxx>
Date: 8/13/13 9:39 pm
To: "abrams@xxxxxxxxxx" <abrams@xxxxxxxxxx>, "mike@xxxxxxxxxxxxxx" 
<mike@xxxxxxxxxxxxxx>
Cc: "sdelbianco@xxxxxxxxxxxxx" <sdelbianco@xxxxxxxxxxxxx>, "bc-gnso@xxxxxxxxx" 
<bc-gnso@xxxxxxxxx>

    I think ICANN should stay out of trademark law.

Sent from Yahoo! Mail for iPhone   
  
   From:  Andy Abrams <abrams@xxxxxxxxxx>; 
  To:  Mike Rodenbaugh <mike@xxxxxxxxxxxxxx>; 
  Cc:  J. Scott Evans <jscottevans@xxxxxxxxx>; Steve Delbianco 
<sdelbianco@xxxxxxxxxxxxx>; bc - GNSO list <bc-gnso@xxxxxxxxx>; 
  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@xxxxxxxxxxxxxx> 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@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of J. 
Scott Evans
 Sent: Tuesday, August 13, 2013 4:22 PM
To: abrams@xxxxxxxxxx; sdelbianco@xxxxxxxxxxxxx
 Cc: bc-gnso@xxxxxxxxx
  
Subject: Re: [bc-gnso] BC comment on singular plural

 
   
     Ridiculous.

Sent from Yahoo! Mail for iPhone
    
    
   
From: Andy Abrams <abrams@xxxxxxxxxx>; 
 To: Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>; 
 Cc: bc - GNSO list <bc-gnso@xxxxxxxxx>; 
 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@xxxxxxxxxxxxx> 
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
 

   
  
 






 


  
-- 
Andy Abrams | Trademark Counsel
 Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043 (650) 669-8752