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Google beats Donuts in objection — .pet and .pets ARE confusingly similar

Kevin Murphy, August 16, 2013, 14:06:53 (UTC), Domain Policy

Google has won a String Confusion Objection against rival new gTLD applicant Donuts, potentially forcing .pet and .pets into the same contention set.

The shock ruling by International Centre for Dispute Resolution panelist Richard Page goes against previous decisions finding singulars and plurals not confusingly similar.

In the 11-page decision, Page said he decided to not consider the reams of UDRP precedent or US trademark law submitted by the two companies, and seems to have come to his opinion based on a few simple facts:

Objector has come forward with the following evidence for visual, aural and meaning similarity. Visually, the words are identical but for the mere addition of the letter “s”. Aurally, the word “pets” is essentially phonetically equivalent to the word “pet”. The term “pet” is pronounced as it is spelled, “pet”. 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. In commercial meaning, the terms show no material difference. As English nouns, “pets” is the pluralization of “pet”.

The visual similarity and algorithmic score are high, the aural similarity is high, the meaning similarity is high. Objector has met its burden of proof. The cumulative impact of these factors is such that the Expert determines that the delegation of <.pet> gTLD and the <.pets> gTLD into the root zone will cause a probability of confusion.

Page did take into account the similarity score provided by the Sword algorithm — for .pet and .pets it’s actually a fairly weak 72% — in his thinking on visual similarity.

But he specifically rejected Donuts’ defense that co-existence of plurals at the second level was proof that plural/singular gTLDs could also co-exist at the top-level, saying:

The rapid historical development of the Internet and the proliferation of domain names over the past two decades has taken place without the application of the string confusion standard now established for gTLDs. Therefore, the Expert has not considered the current coexistence of pluralized second-level TLDs or similarities between country code TLDs and existing gTLDs in the application of the string confusion standard in this proceeding.

Can: open. Worms: everywhere.

The decision stands in stark contrast to the decision (pdf) of Bruce Belding in the .hotel v .hotels case, in which it was found that the two strings were “sufficiently visually and audibly different”.

Likewise, the panelist in .car v .cars (pdf) found that Google had not met the high evidential bar to proving the “probability” rather than mere “possibility” of confusion.

One has to assume that the evidence Google submitted in .car is fairly similar to the evidence it submitted in .pets.

Are String Confusion Objections just a crap shoot, the outcome depending on which panelist you get? It’s probably too early to say for sure, but it’s looking like a possibility.

The big test will come with the next .pets decision. Afilias, the other .pet applicant, has also filed an SCO against Donuts over its .pets bid.

What if the panel in the Afilias case goes the other way? Will Donuts be in a contention set with Google and Afilias or won’t it?

I asked Akram Atallah, president of ICANN’s Generic Domains Division, about this yesterday and he said that ICANN basically doesn’t know, and that it might have to refer back to the community for advice.

Read the Atallah interview here and the .pets decision (pdf) here.

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Comments (21)

  1. John Berryhill says:

    Are “chico” and “chica” similar?

    Does the answer differ depending on whether you know what they mean in Spanish?

    • Kevin Murphy says:

      That’s a very good question.

      “Meaning” is one of the factors these panelists are supposed to consider, so I assume the answer you’re looking for is “yes”.

      • John Berryhill says:

        To the majority of internet users “chico” and “chica” mean nothing at all, because a majority of internet users do not speak Spanish (or English for that matter).

  2. Michael Palage says:

    John,

    I think the only language the community/applicants should be concerned about is GACese. While the GAC reiterated its stance on community support for certain strings in its Durban communication, the issue of singular/plural was not explicitly reaffirmed. Will be interesting to see what comes out of the GAC BA communication as I agree with Kev the can has been open.

    Best regards,

    Michael

  3. Michael Palage says:

    Ironically the panelist’s Freudian slip of referencing Donuts website as donuts.com instead of donuts.co.

    So if a highly educated and trained expert such as Mr. Page could make a mistake with a single letter in his opinion “adding an M” to donuts domain name, could consumers equally make a mistake by adding an “S” to a domain name?

    • JS says:

      😀 nice catch

    • John Berryhill says:

      If the standard was “could consumers make a mistake”, the answer is yes. However, that’s not the criterion in the policy. .CO and .COM have long existed as a part of the factual background against which these decisions are made.

      What I wanted to see happen was for Verisign to win the dispute between .net and .pet.

      That result would have led to whether there is a “transitive property of TLDs”. In other words, if .pet was found to be too similar to .net, and thus disqualified; then if .pets is found to be too similar to .pets, and thus drawn into a disqualified “contention set”, then does it knock out .pets as well?

      That process then leads to one of my favorite word games, which is starting with one four letter word and ending with another four letter word, by steps of single letter substitution. For example, if you are trying to get your “boat” to a “dock”, then you go:

      boat
      boot
      loot
      loon
      look
      lock
      dock

      At each step, there is only a single letter difference, so a chain of comparisons based on “a single letter difference” takes the lot.

      • Do keep in mind that .co and .com have completely different historical backgrounds. The .co TLD was for the country Colombia. It’s the alternative usage of .co that now causes confusion. I don’t think the fact that .co and .com are allowed to live together (and cause confusion) should be a reason for more confusingly similar TLD’s now to be allowed. The fact that they clearly do cause confusion should rather be a lesson to be learned to avoid even more confusion in the future.

        It is true that, if .net and .pet were seen too similar, then this might cause .pets to also be ruled out. That is indeed a design-problem of the contention sets.

        But luckily you can’t actually go all the way from “boat” to “dock” in the real world, as that would only be possible of all alterations in between were also requested as a new gTLD.

  4. Scott Pinzon says:

    I realize that in this specialized realm, applying common sense is unfair and not allowed. But would an average Internet user have difficulty remembering if a doman was under .pet or .pets? Not only “yes,” but “Hell, yes.” Same for car vs. cars and hotel vs. hotels.

    The rest of these arguments bringing in international copyright, mathematical algorithms, etc. remind me of the time my high school philosophy teacher proved, through strict logic, that it was impossible to get up from our desks and exit the room. Then the period ended, and we all left.

    Once in awhile, naif that I am, I wistfully long for the rules of domain names to makes sense.

    • John Berryhill says:

      I still like the part of the .haiku application, which explains that domains can be up to 64 characters, but must contain 17 syllables.

  5. Kevin Murphy says:

    Here’s a question for y’all:

    What harms was the SCO designed to prevent?

    • Kristina says:

      Easy. Consumer (e.g., user) confusion.

      • Kevin Murphy says:

        That’s not really a harm unless there are some harmful consequences.

      • John Berryhill says:

        Then it is too bad that is not the standard which is written into the policy, which is one of “impermissible” confusion. The policy does not say that even a demonstrated likelihood of some degree of consumer confusion is “impermissible”.

        In order to figure out what the policy is designed to prevent, it is unfortunately necessary to actually read the words in the policy.

    • Vladimir Shadrunov says:

      Tarnishing the reputation of the Domain Name System as means of addressing on the internet. An address stays a good address only as long as it’s distinctive.

      Domain names are designed to be comprehended by humans. If human errors will be massive, DNS won’t be as good addressing system as it used to be.

  6. ChuckWagen says:

    If .pets were to be approved, what would be the chances for .pest (e.g. pest control)?

  7. Confusingly similar should be a combination of different parameters. Sure, .net and .pet are a little bit similar, but they mean completely different things. So I don’t see any possible confusion. Just like existing ccTLD’s .be and .bg don’t cause confusion. They look similar, sound the same but I haven’t known any Belgian ending up on a Bulgarian website because of that reason.

    The error in one of the decisions pointing to Donuts’ website as “donuts.com” instead of “donuts.co” has also made clear that .co and .com are a good examples of what in new gTLD game should be called “too confusingly similar”. If .co had however retained its original use of “Colombia”, then that similarity would have been much smaller.

    It also works the other way around: the meaning of .car and .auto is clearly too similar. But the words themselves are so different that confusion will be minimal.

    In that theory, I would for example say that the visually rather similar “chanel” and “channel” won’t cause trouble while visually very different “host” and “hosting” require a closer look at.

  8. Nobody says:

    The ICDR messed up here big time. They were supposed to consolidate objections. So a string similarity objection between two exact strings should have been consolidated so that you get one consistent decision. This is what the process called for.

    Now you could end up with inconsistencies like one evaluator looking at trademark law and the other ignoring it, but the explicit circus here comes from the DRSP not following the rules.

    As someone involved in an ICC evaluated community objection, I can assure you that the ICDR is not unique here. Explicit and important rules in the guidebook carefully negotiated over the course of years are just ignored when inconvenient.

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