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

[Phil Corwin <psc@xxxxxxxxxxx>]

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@xxxxxxxxxxxxxxxxxxx [mailto:john@xxxxxxxxxxxxxxxxxxx]
Sent: Wednesday, August 14, 2013 12:49 PM
To: J. Scott Evans <jscottevans@xxxxxxxxx>; abrams@xxxxxxxxxx 
<abrams@xxxxxxxxxx>; mike@xxxxxxxxxxxxxx <mike@xxxxxxxxxxxxxx>
Cc: sdelbianco@xxxxxxxxxxxxx <sdelbianco@xxxxxxxxxxxxx>; bc-gnso@xxxxxxxxx 
<bc-gnso@xxxxxxxxx>
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@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.

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________________________________
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<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@xxxxxxxxx<https://email14.secureserver.net/return> 
[mailto:owner-bc-gnso@xxxxxxxxx<https://email14.secureserver.net/return>] On 
Behalf Of J. Scott Evans
Sent: Tuesday, August 13, 2013 4:22 PM
To: abrams@xxxxxxxxxx<https://email14.secureserver.net/return>; 
sdelbianco@xxxxxxxxxxxxx<https://email14.secureserver.net/return>
Cc: bc-gnso@xxxxxxxxx<https://email14.secureserver.net/return>

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



Ridiculous.

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________________________________
From: Andy Abrams <abrams@xxxxxxxxxx<https://email14.secureserver.net/return>>;
To: Steve DelBianco 
<sdelbianco@xxxxxxxxxxxxx<https://email14.secureserver.net/return>>;
Cc: bc - GNSO list <bc-gnso@xxxxxxxxx<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@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<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>