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Reconsideration is not an appeals process: ICANN delivers another blow to Amazon’s gTLD hopes

Kevin Murphy, October 15, 2013, 08:51:04 (UTC), Domain Policy

Amazon has lost its appeal of a ruling that says its applied-for new gTLD .通販 is “confusingly similar” to .shop, with ICANN ruling that its Reconsideration mechanism is not an appeals process.

The e-commerce giant lost a String Confusion Objection filed by .shop applicant Commercial Connect in August, with panelist Robert Nau ruling that the two strings were too confusing to co-exist.

That’s despite one of the strings being written in Latin script and the other Japanese. The ruling was based on the similarity of meaning: 通販 means “online shopping”.

Amazon immediately filed a Reconsideration Request with ICANN.

Days earlier, Akram Atallah, president of ICANN’s Generic Domains Division, had described this process as one of the “avenues for asking for reconsidering the decision”.

Atallah was less clear on whether Reconsideration was applicable to decisions made by third-party panels — the new gTLD program’s Applicant Guidebook contains conflicting guidance.

ICANN’s Board Governance Committee, which handles Reconsideration Requests, has now answered that question: you can ask for Reconsideration of a new gTLD objection ruling, but you’ll only win if you can prove that there was a process violation by the panel.

In its decision, the BGC stated:

Although Commercial Connect’s Objection was determined by a third-party DRSP, ICANN has determined that the Reconsideration process can properly be invoked for challenges of the third-party DRSP’s decisions where it can be stated that either the DRSP failed to follow the established policies or processes in reaching the decision, or that ICANN staff failed to follow its policies or processes in accepting that decision.

That’s moderately good news as a precedent for applicants wronged by objections, in theory. In practice, it’s likely to be of little use, and it was of no use to Amazon. The BGC said:

In the context of the New gTLD Program, the Reconsideration process does not call for the BGC to perform a substantive review of DRSP Panel decisions; Reconsideration is for the consideration of process- or policy-related complaints.

As there is no indication that either the ICDR or the Panel violated any policy or process in accepting and sustaining Commercial Connect’s Objection, this Request should not proceed. If Amazon thinks that it has somehow been treated unfairly in the process, and the Board (through the NGPC) adopts this Recommendation, Amazon is free to ask the Ombudsman to review this matter.

While the BGC declined to revisit the substance of the SCO, it did decide that it’s just fine for a panelist to focus purely on the meaning of the allegedly confusing strings, even if they’re wholly visually dissimilar.

The Panel’s focus on the meanings of the strings is consistent with the standard for evaluating string confusion objections. A likelihood of confusion can be established with any type of similarity, including similarity of meaning.

In other words, Nau’s over-cautious decision stands: .通販 and .shop will have to enter the same contention set.

That’s not great news for Amazon, which will probably have to pay Commercial Connect to go away at auction, but it’s also bad news for increasingly unhinged Commercial Connect, whose already slim chances of winning .shop are now even thinner.

Commercial Connect had also filed a Reconsideration Request around the same time as Amazon’s, using the .通販 precedent to challenge a much more sensible SCO decision, which ruled that .shop is not confusingly similar to .购物, Top Level Domain Holdings’ application for “.shopping” in Chinese.

The BGC ruled that the company had failed to adequately state a case for Reconsideration, meaning that this objection ruling also stands.

The big takeaway appears to be that the BGC reckons it’s okay for objection panels to deliver decisions that directly conflict with one another.

This raises, again, questions that have yet to be answered, such as: how do you form contention sets when one string has been ruled confusingly similar and also not confusingly similar to another?

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Comments (18)

  1. John Berryhill says:

    The mystery here is why Commercial Connect wanted Amazon’s IDN TLD to be in the .shop contention set in the first place.

  2. Andrew says:

    Amazon was already in the contention set for .shop since it also applied for it. Now Amazon has to choose either .shop or .通販, so it’s safe to assume it’s application for .通販 is dead.

    • Kevin Murphy says:

      Are you sure about that? Nobody has ruled that Amazon’s .shop is confusingly similar to .通販, have they?

      • Andrew says:

        If you lose a string confusion objection then your application is placed in a contention set with the objectors, correct?

        • Kevin Murphy says:

          Correct.

          • Rubens Kuhl says:

            But Kevin is right here: a new contention set is created with only the two applications involved in the objection. So the Amazon IDN is not in direct contention with the Amazon .shop application. There is indirect contention but all that needs to happen is Amazon IDN beating Commercial Connect in auction and someone, either Amazon or any other .shop applicant, beating Commercial Connect for the .shop contention set.

            Commercial Connect now will need more money than the other .shop applicants to prevail at last resort auction, which actually decrease their valuation for the string.

            I think they misunderstood what could be achieved by winning a string confusion objection while you are an applicant…

  3. Dirk Krischenowski says:

    These are the decisions:

    – case 50 504 261 13, .shop and Japanese .通販 (online shopping, Amazon) are similar!

    – case 50 504 258 13, .shop and Chinese .购物 (.shopping, TLDH) are not similar

    – case 50 504 241 13, .shop and .家電 (online shopping, Wild Island LLC) is still open

    – gTLDs .weibo and .微博 are similar (Legal Rights Objection)

  4. Dirk Krischenowski says:

    Many in the ICANN community recognized that the whole new gTLDs similarity process went wrong and ICANN urgently needs to correct this before more gTLDs go live.

    Many we have not talked about the fact that there are some more new gTLDs that are very likely to cause user confusion although there have been no String Confusion Objections for these strings. Please note that the visual similarity of .unicorn / .unicom was 94%. Here are examples of other visual similarity scores from the sword tool:

    Visual similarity:

    80% .vermögensberater / .vermögensberatung
    80% .allfinanzberater / .allfinanzberatung
    81% .photo / .photos
    84% .career / .careers (both contracted!!!)
    84% .coupon / .coupons
    86% .chanel / .channel
    88% .accountant / . accountants
    93% .theater /.theatre

    I’m not a lawyer but if the visual string similarity is already determined high it is difficult to argue that other similarity factors are so different, that the visual effect diminishes. We’ve also updated of our chart that visualizes the discrepancy in String Confusion Objection determinations and Visual Similarity Decisions at http://dotzon.de/ICANN_ICDR_String_Confusion_Objections.pdf

  5. Andrew says:

    My reading of the guidebook is that now Amazon’s string is in one contention set with all of the .shop applications due to the indirect contention. I’m not quite sure how Amazon’s contention with Commercial Connect gets resolved prior to the other contention set, although Paul Stahura has said you can do simultaneous descending clock auctions.

    As for commercial connect, I don’t think it was a misunderstanding of what it would achieve. We’re talking about the company that wants basically all commerce terms to be lumped into one group, which would necessitate one large auction.

  6. Dirk Krischenowski says:

    One of the afterburners and really bad things if ICANN does not install appropriate reconsideration or appeal mechanisms to the flawed String Confusion topic is that we will see massive copycating of the “not similar” thing such as

    .londoner
    .shops
    .cams
    .apples
    .musik

    They all might argue that .career/.carrers and .hotel/.hotels are not similar at all …

  7. Kassey says:

    “- case 50 504 241 13, .shop and .家電 (online shopping, Wild Island LLC) is still open”

    .家電 is Chinese and in NO way means “online shopping”. The correct translation should be “consumer electronics”, imho.

  8. Dirk Krischenowski says:

    That is what ICANN says to .商店 in its database:

    Wild Island, LLC US/NA IDN A-label: xn--czrs0t
    Script Code: Hans
    English Meaning:
    Commercial shop or store,
    selling goods
    1-1490-59840

  9. Dirk Krischenowski says:

    But for 家電 ICANN listed:

    Amazon EU S.à r.l.
    http://www.amazon.com/
    LU/EUR IDN A-label: xn--fct429k
    Script Code: Hani
    English Meaning:
    Consumer Electronics
    1-1318-54339

  10. Kassey says:

    @Dirk, the ICANN record above uses “Consumer Electronics”, so my statement is correct. Well, not quite. .家電 can also be a Japanese word with the same meaning.

  11. a 日本人 says:

    It is apparent that “通販” is NOT confusingly similar
    to “shop.”

    “通販” which stands for “通信販売”, literally means “communication selling”.

    (“通販” includes Mail Order/Telephone Order/Fax Order/Internet Order, etc.)

    “selling”, not “shopping”

    UC?

  12. Andrew Merriam says:

    Doing a targeted search of the AGB, I don’t see the word “reconsideration” come up at all; any further details on the AGB’s “conflicting guidance?”

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