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

["Smith, Bill" <bill.smith@xxxxxxxxxxxxxx>]

Mari Jo,

Excellent post. No easy answers… except for ICANN to abandon what has become 
and will remain a hopelessly complex and expensive transition of the DNS from a 
taxonomy-based system to a market-based one.

Where there was once order, we will now have "competition". "Dot chico" and 
"dot chica" can compete between themselves and with "dot child", "dot 
children", and a myriad of semantically similar but linguistically distinct 
TLDs. In a market-based system this is goodness. It will result in an increased 
pool of available names. Typically an increase in supply without a commensurate 
increase in demand results in lower prices.

Over time, we may see consolidation of TLDs as competition winnows out the less 
fortunate in this expansion. We will then have name collisions at the second 
level which will bring an opportunity for yet more competition and profit 
making. Regretfully, consumers (in the large) won't really benefit because as a 
rule they better understand simplicity, order, and stability. Change is not 
necessarily bad, but it can impact consumers in significant ways, not always 
positive.

For me, "doing the right thing" would have been a rather more orderly expansion 
of the gTLD space. Given that that train is far out of the station, we are left 
with how to deal with the complexity of an arbitrary expansion. Part of the 
complexity in the "current new" system is the policy decision to avoid 
similarity. Making such decisions requires judgement and weighing a 
considerable number of factors in order to arrive at a "common sense" decision. 
ICANN (the community) works best with a smaller number of factors and ICANN 
(the corp) prefers to make no judgements.

If we are committed to the market-based approach, perhaps the best path forward 
is to ignore similarity altogether and allow the market to decide. I say this 
only partly in jest given the time we have all invested in this discussion and 
the apparent arbitrary decisions we are seeing in the English-only 
singular/plural cases. There seems no point in endlessly debating similarity if 
in the end an arbitrary decision will be rendered. Better to let the market 
decide and save everyone a great deal of time.

Consumers will eventually settle the matter, at least that's the theory.

Bill

On Aug 16, 2013, at 10:08 AM, Mari Jo Keukelaar 
<mj@xxxxxxxxxxxxxxxxx<mailto:mj@xxxxxxxxxxxxxxxxx>> wrote:

It is worth noting that this discussion is unfortunately referred to as 
"singular/plural" as a consequence of our Anglo-centrism; even there the 
discussion does not take into account Germanic plural forms in English - e.g. 
child/children or other northern European English adoptions like wife/wives or 
mouse/mice, where the SWORD algorithm would likely fail to pick up enough in 
the line of similarity to provide some evidence of a likelihood of confusion, 
let alone something impermissible. I, for one, have never been confused by 
whether "wife" and "wives" mean two very different things, and I hope I've 
managed to clearly convey this concept to my husband.

As for the subject of what is "common sense," we may all have common sense but 
we do not have a common language. I would be curious to know what "common 
sense" dictates, for example, when discussing masculine and feminine forms in 
Romance languages. In Spanish, chico and chica are as different as night and 
day. Any boy and girl would tell you the same; they all have cooties. If one 
doesn't know what "chico" and "chica" mean, however, - which is likely true for 
the majority of internet users - is the answer, as a policy matter, different?

The answer is very different if you speak Spanish, but the "majority language" 
of internet users is most likely not Spanish, nor is it English.  If we are 
seeking to make policy which is generally applicable to the global internet, 
does it matter whether "chico" and "chica" mean two different things to one 
language group, while appearing to be pretty much the same thing for everyone 
else?   If one speaks neither English nor Spanish, "chico" and "chica" probably 
appear to be more similar than, say, "thing" or "things", which are at least 
different string lengths.

Quite frankly, to me, all of the Arabic, Hebrew and Chinese IDN TLDs look very 
much alike since I am unfamiliar with those scripts. Given my ignorance, and 
applying the principle of “I doubt that I am alone,” shouldn't we also be 
asking "confusing to whom?"

Unless we are seeking to make a limited policy on "English Nouns With Latinate 
Plurals" we are going to have to become very cunning linguists indeed, as the 
next round will find us conjugating verbs and making adverbs out of adjectives 
while the entire non-English speaking world patiently waits for valuable policy 
attention to be paid to some issue which might be relevant to them.

As with the repeated "what about us?" comments from users of pictographic 
writing whenever the subject of "single character domains" came up, we should 
be sensitive to how the "singular/plural issue" is defined, because we are only 
addressing a subset of English nouns.

Is the goal here to devise a general rule addressing "things which are similar 
across the board" or are we embarking on an exercise which will eventually lead 
to a policy compendium addressing the peculiarities of every human language, 
guided by a "common sense" standard? If the latter, that is going to take 
considerable time and resources. As for “doing the right thing” I am hard 
pressed to know how to build a policy or a standard around such an ill defined 
concept. It reminds me of obscenity being something I know when I see it.

Mari Jo


From: owner-bc-gnso@xxxxxxxxx<mailto:owner-bc-gnso@xxxxxxxxx> 
[mailto:owner-bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>] On Behalf Of Smith, 
Bill
Sent: Wednesday, August 14, 2013 7:03 PM
To: Andy Abrams
Cc: Mari Jo Keukelaar; jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>; bc 
- GNSO list
Subject: Re: [bc-gnso] BC comment on singular plural

+1

I don't see this as a trademark issue. Rather it is an issue of common sense 
and "doing the right thing". It seems we lose on both counts.

On Aug 14, 2013, at 1:34 PM, Andy Abrams 
<abrams@xxxxxxxxxx<mailto:abrams@xxxxxxxxxx>> wrote:


Hi Mari Jo,

Thank you for your input - I think we're actually opposite each other in the 
other pending car/cars case, so it's good to get other perspectives.  You raise 
some very valid points, and I think the ICDR will likely agree with your legal 
reasoning.  But speaking only for myself, my concerns are not based on the 
application of trademark law at the top level.  Rather, as an Internet policy 
matter, I respectfully believe that allowing generic singular-plural TLDs will 
be confusing to consumers and bad for businesses that wish to operate websites 
on one of the two TLDs.  Imagine a case where a legitimate business is faced 
with negative PR, or worse, scams/phishing, etc. because half of their 
prospective customers mistakenly go to used.cars instead of used.car.  
Secondly, simply as a matter of process, if is literally impossible to win a 
string confusion objection unless ICANN had already placed the strings in 
contention (thereby making the need for an objection moot), it would have been 
nice to have that guidance prior to everyone expending money and resources on 
these proceedings.  I guess we'll learn very soon whether the remaining 
singular-plural decisions follow suit...

Best,

Andy

On Wed, Aug 14, 2013 at 12:41 PM, Mari Jo Keukelaar 
<mj@xxxxxxxxxxxxxxxxx<mailto:mj@xxxxxxxxxxxxxxxxx>> wrote:

To be clear: the decisions reached in car/cars and hotel/hotels are actually 
more in keeping with present interpretation of trademark law than they are 
dissimilar since plurals of generic words are not "confusingly similar" to 
other generic words under traditional trademark analysis. We should avoid 
applying terminology from trademark law out of context, in what are contests 
between strings that are not themselves trademarks.



In these "generic word" disputes, the objecting parties have tended to make 
arguments based on trademark confusing similarity analysis. In that analysis, 
though, the trademark has already been determined to be distinctive. So those 
circumstances involve comparing something to something else which has 
established distinctiveness. The point is to avoid erosion of what are already 
distinctive marks. That reasoning just does not apply to generic terms.



This has been true for years under the Uniform Domain Name Dispute Policy. No 
confusing similarity was found between “Tire Discounter” and “Tire Discounters” 
despite the difference of only a single letter in Tire Discounters, Inc. v. 
TireDiscounter.com<http://TireDiscounter.com>, NAF Claim Number:

FA0604000679485 (“[b]ecause the mark is merely descriptive, small differences 
matter”).



Nor was confusing similarity found between the “The Suit Warehouse” mark and a 
“SuitWarehouse” domain name because the presence of descriptively common words 
necessarily restricts the “confusingly similar” analysis very closely to exact 
identity. The Men's Wearhouse Inc. v. Brian Wick d/b/a 
Defaultdata.com<http://Defaultdata.com>, NAF Claim Number: FA0208000117861.



The results have been no different under the Lanham Act. In a similarity 
analysis between “ENTREPRENEUR” and “ENTREPRENEUR PR” in two internet domain 
names, the 9th Circuit declined to find confusing similarity, noting, “[i]n the 
Internet context, consumers are aware that domain names for different Web sites 
are quite often similar, because of the need for language economy, and that 
very small differences matter.” Entrepreneur Media, Inc. v. Smith, 279 F. 3d 
1135, 1147 (9th Cir., 2002).



Additionally, the notion that terms lacking distinctiveness are not subject to 
"confusing similarity" analysis is also true outside of the US, as the High 
Court of Australia opined in Hornsby Building Information Centre Pty Ltd v. 
Sydney Building Information Centre Ltd, [1978] HCA 11:



“There is a price to be paid for the advantages flowing from the possession of 
an eloquently descriptive trade name. Because it is descriptive it is equally 
applicable to any business of a like kind, it’s very descriptiveness ensures 
that it is not distinctive of any particular business.”



Of course if you are dealing with established distinctive marks then, yes, 
"Verizons" will be confusingly similar to "Verizon". But the scope of 
"confusing similarity" has always been delimited by the distinctiveness of the 
mark under analysis.



That a panel, applying ordinary principles of application of the trademark term 
"confusingly similar" would decline to find such similarity between two generic 
words is neither surprising nor unusual. If this was an unexpected result, then 
one might just as well ask how lawyer.com<http://lawyer.com/> and 
lawyers.com<http://lawyers.com/> manage to exist under different ownership 
(along with cars.com/car.com<http://cars.com/car.com>, 
house.com/houses.com<http://house.com/houses.com> 
dog.com/dogs.com<http://dog.com/dogs.com>, and many other generic words).



Furthermore, and perhaps even more importantly, under the ICANN rules we are 
not merely looking at "confusing similarity" but rather, a higher standard of 
"impermissible" confusing similarity. Comparing these string objections to 
outcomes in trademark cases is the proverbial mixing of apples and oranges 
because the generic strings involved are not, as a threshold matter, even 
trademarks. The lack of distinctiveness in generic words drives the result that 
they are not entitled to the broad swath of protection afforded that which 
would be impermissibly confusing.


ICANN has done much to protect trademark interests and we can all argue as to 
whether they have done enough or not.  Here, however, we are not even talking 
about trademarks; we are dealing with two generic terms.  The panels did not 
lose sight of that and I wonder why we sit here bashing them for applying the 
Policy we all approved and the law over which we’ve little control.

Mari Jo Keukelaar, M.A./J.D.
Name Administration, Inc.



From: owner-bc-gnso@xxxxxxxxx<mailto:owner-bc-gnso@xxxxxxxxx> 
[mailto:owner-bc-gnso@xxxxxxxxx<mailto:owner-bc-gnso@xxxxxxxxx>] On Behalf Of 
Andy Abrams
Sent: Tuesday, August 13, 2013 7:09 PM
To: Steve DelBianco

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


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<http://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<mailto: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>