Demand Media is demanding an ICANN review of its objections policy, after its applied-for new gTLD .cam was beaten in a String Confusion Objection by .com registry Verisign.
A International Centre for Dispute Resolution panelist has ruled (pdf) that .cam and .com are too confusingly similar to coexist, meaning Demand’s bid for .cam must be rejected by ICANN.
But the ruling by Urs Laeuchli conflicts with two other ICDR panel decisions on .cam, which both found that the string is NOT confusingly similar to .com and therefore can be delegated.
So while Demand’s .cam bid, under a strict reading of the rules, is now supposed to be rejected, applications for identical strings filed by AC Webhosting and dotAgency can go ahead.
ICANN has been thrown a curve ball it is not yet fully prepared to deal with.
As Akram Atallah, president of ICANN’s Generic Domains Division, told DI last week, it’s possible that the policy or the implementation of that policy may need to be revisited by ICANN and the community.
United TLD, the Demand Media subsidiary that applied for .cam, is now calling for precisely that, with vice president of business and legal affairs Statton Hammock writing today:
String confusion objections are meant to be applicant agnostic and have nothing to do with the registration or use of the new gTLD. What matters in string confusion objections is whether a string is visually, aurally or, according to ICANN’s Applicant Guidebook, otherwise “so nearly resembles another that it is likely to deceive or cause confusion.” Individuals may disagree on whether .CAM and .COM are similarly confusing, but there can be no mistake that United TLD’s .CAM string, AC Webhosting’s .CAM string, and dotAgency Limited’s .CAM string are all identical. Either all three applications should move forward or none should move forward.
The .cam cases are not alone in presenting ICANN with SCO problems.
Last week, Donuts’ bid for .pets was ruled confusingly similar to Google’s .pet, despite previous ICDR cases finding that plurals and singulars are not too confusing to coexist.
Where the .cam panelists disagreed
While there were three .cam cases, two of them were decided by the same panelist. It seems that both panelists were provided with very similar sets of evidence in all three cases.
It’s relevant to note that neither panelist — unlike some of their colleagues in other cases — thought it was appropriate to apply trademark law such as the DuPont factors in their decisions.
They did, however, consider the expected use cases of .cam.
All three applicants take .cam as short for “webcam” or “camera” and would target registrants interested in those fields (a lot of the use will likely be pornographic — AC Webconnecting is a porn firm after all).
But all three applicants also want to run “open” gTLDs, with no registration restrictions.
ICDR panelist Murray Smith was in charge of both the AC Webconnecting and dotAgency cases. He addressed expected usage explicitly in dotAgency, and explained why:
It is not just the visual, phonetic and conceptual similarity between the words that must be taken into account. In my view the greater emphasis should be focused on the use of the disputed extensions in the context of modern Internet usage. It is this context that compels the conclusion that an average Internet user would not be confused and would know that a .com website is probably a commercial website while a .cam websites would be something more focused in a particular field.
In AC Webconnecting, he wrote:
I agree that a consumer would quickly realize that a .cam website is likely associated with photography or camera use and is different than a .com website in use generally by a myriad of commercial entities.
So he’s putting the “greater emphasis” on usage — a factor that is not explicitly mentioned in the Applicant Guidebook’s description of the SCO and which may quite often differ between applicants.
Right there, in Smith’s interpretation of his task, we have a reason why SCOs will produce different results for identical strings.
I find Smith’s thinking baffling for a couple of reasons.
First, “a consumer would quickly realize that a .cam website is likely associated with photography” seems to ignore the existence of a bazillion .com web sites that are also associated with photography.
When did “commercial entities” and “photography or camera use” become mutually exclusive? Is photographyblog.com not confusingly similar to photographyblog.cam?
Second, he ignores the fact that basically anyone will be able to register a .cam web site for basically any purpose. None of the applicants want to restrict the gTLD to camera-related stuff.
ICDR panelist Laeuchli, in the Demand Media .cam case, raised this precise point, saying:
“.com” and “.cam” would use the same channels appealing to a broad audience. Even though according to Applicant, its envisioned TLD will “likely appeal” to a specific audience, it plans to operate “.cam” as an open gTLD. This would lead to extensive overlap.
Panelist Smith has some other notions about confusion that seem to defy common sense. He wrote in the AC Webconnecting case:
The .com TLD is the most widely recognized string in the Internet world. No reasonable Internet user would fail to recognize the .com TLD. The very reputation of the .com name serves to limit the potential for an average Internet user to be confused by the proposed .cam TLD. It is indeed unlikely that an online consumer would confuse a .com website with a .cam website.
Does this not strike anyone else as bad thinking?
It seems to me to be a little like saying that it’s perfectly okay to market a brand of carbonated beverage called Cuke, because Coke is so famous that nobody could possibly be confused. I don’t know where the law stands on that issue, but I’m pretty sure Coke wouldn’t be happy about it.
There’s also some weirdness in Laeuchli’s decision in the Demand case.
He puts some weight on the similarity scores produced by the controversial Sword algorithm in his decision, but apparently without doing even the basic research. He writes in his findings:
No matter what the standards and purpose the ICANN SWORD algorithm includes, it has comparative value.
Since pairs such as “God” and “dog” (85%) reach similarity scores of 84% and higher, how much more similar would “cxm” and “cxm” be (x being replaced with a vowel)!
The answer is that, according to Sword, they’re less similar. Sword scores “cam” v “com” at 63%.
Laeuchli knows it’s 63%, because he makes reference to that fact in his summary of Verisign’s evidence. He doesn’t need to speculate about the number based on what “god” v “dog” scores (and if he did the “dog” v “god” query himself, why on earth didn’t he just query “com” v “cam” too?)
His finding that .cam and .com will cause probable confusion seems to be based largely on expert witness testimony provided by both Verisign and Demand, in which he found Verisign’s more persuasive.
This evidence seems to have largely comprised the opinions of linguists, examining mouth shapes and acoustic frequencies, and market research looking into internet user behavior. As none of it has been published, it’s difficult to judge which side had the better arguments.
But it’s undeniably about the similarity of the strings, rather than the proposed usage, which makes Demand Media’s statement today — that SCOs “are meant to be applicant agnostic and have nothing to do with the registration or use of the new gTLD” — quite confusing.
Demand lost its case based on the string similarity, whereas the other two applicants won theirs based on the usage.
Perhaps Demand senses that its .cam application will not be immediately rejected if ICANN reopens the debate about string similarity. If think it’s probably correct.
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.
Filing a lawsuit against a competitor won’t stop ICANN rejecting your new gTLD application.
That’s according to Akram Atallah, president of ICANN’s Generic Domains Division, who spoke to DI yesterday about possible outcomes from new gTLD objection rulings.
He also said that applicants that believe they’ve been wronged by the objection process may have ways to appeal the decisions and addressed what happens if objection panels make conflicting decisions.
Lawsuits won’t stay ICANN’s hand
In light of the lawsuit by Del Monte International GmbH against Del Monte Corp, as reported by Domain Name Wire yesterday, I asked Atallah if ICANN would put applications on hold pending the outcome of legal action.
The GmbH lost a Legal Rights Objection filed by the Corp, which is the older company and owner of the “Del Monte” trademark pretty much everywhere, meaning the GmbH’s bid, under ICANN rules, must fail.
Atallah said lawsuits should not impact ICANN’s processes.
“For us it’s final,” Atallah said. “If they have to go outside and take legal action then the outcome of the legal action will be enforceable by law and we will have to abide by it. But from our perspective the [objection panel’s] decision is final.”
There might be ways to appeal
In some cases when an applicant loses an objection — such as a String Confusion Objection filed by an existing TLD or an LRO filed by a trademark owner — the only step left is for it to withdraw its application and receive whatever refund remains.
There have been no such withdrawals so far.
I asked Atallah whether there were any ways to appeal a decision that would lead to rejection.
“The Applicant Guidebook is very clear,” he said. “When an applicant loses an objection, basically their application will not proceed any further. We would like to see them withdraw their application and therefore finish the issue.”
“Of course, as with anything ICANN, they have some other avenues for asking for reconsidering the decision,” he added. “Basically, going to the Ombudsman, filing a Reconsideration Request, or even lobbying the board or something.”
I wondered whether the Reconsideration process would apply to decisions made by third parties such as arbitration panels, and Atallah admitted that the Guidebook was “murky” on this point.
“There are two mentions in the Guidebook of this, I think,” he said. “One mentions that it [the panel’s decision] is final — the application stops — the other mentions that it is advice to staff.”
That seems to be a reference to the Guidebook at 3.4.6, which states:
The findings of the panel will be considered an expert determination and advice that ICANN will accept within the dispute resolution process.
This paragraph suggests that ICANN staff have to accept the objection panel’s decision. That would make it an ICANN decision to reject the application, which can be challenged under Reconsideration.
Of course, the Reconsideration process has yet to see ICANN change its mind on any matter of substance. My feeling is that to prevail you’d at a minimum have to present the board with new information not available at the time the original decision was made.
What if different panelists reach opposite conclusions?
While the International Centre for Dispute Resolution has not yet published its panels’ decisions in String Confusion Objection cases, a few have leaked out.
(UPDATE: This turns out not to be correct. The decisions have been published, but the only way to find them is via obscured links in a PDF file buried on the ICDR web site. Way to be transparent, ICDR.)
I’ve read four, enough to see that panelists are taking diverse and sometimes opposing views in their decision-making.
For instance, a panelist in .car v .cars (pdf) decided that it was inappropriate to consider trademark law in his decision, while the panelist in .tv v .tvs (pdf) apparently gave trademark law a lot of weight.
How the applicants intend to use their strings — for example, one may be a single-registrant space, the other open — seems to be factoring into panelists’ thinking, which could lead to divergent opinions.
Even though Google’s .car was ruled not confusingly similar to Donuts’ .cars, it seems very possible that another panelist could reach the opposite conclusion — in one of Google’s other two .cars objections — based on trademark law and proposed usage of the gTLD.
If that were to happen, would only one .cars application find itself in the .car contention set? Would the two contention sets be linked? Would all three .cars applications wind up competing with .car, even if two of them prevailed against Google at the ICDR?
It doesn’t sound like ICANN has figured out a way to resolve this potential problem yet.
“I agree with you that it’s an issue to actually allow two panels to review the same thing, but that’s how the objection process was designed in the Guidebook and we’d just have to figure out a way to handle exceptions,” Atallah said.
“If we do get a case where we have a situation where a singular and a plural string — or any two strings actually — are found to be similar, the best outcome might be to go back to the GNSO or to the community and get their read on that,” he said. “That might be what the board might request us to do.”
“There are lots of different ways to figure out a solution to the problem, it just depends on how big the problem will be and if it points to an unclear policy or an unclear implementation,” he said.
But Atallah was clear that if one singular string is ruled confusing to the plural version of the same string, that panel’s decision would not cause all plurals and singulars to go into contention.
“If a panel decides there is similarity between two strings and another panel said there is not, it will be for that string in particular, it would not be in general, it would not affect anything else,” he said.
ICANN, despite Governmental Advisory Committee advice to the contrary, decided in late June that singular and plural gTLDs can coexist under the new regime.
ICANN CEO Fadi Chehade has said he hopes that new gTLD application fees will be lower in the second round.
Speaking to Marketplace in a brief audio interview yesterday, he said:
As we go to round two, which everyone is clamoring for us to open, we will reassess the costs. We are a non-profit and therefore if the learnings from this first round lead us to a different fee — and I hope personally a lower fee so more people can participate — we will adjust that as we go.
The fees in the current round were $185,000, though the refund schedule means only successful applicants pay the full fee.
I’ve heard a couple of murmurings recently — nothing concrete as yet — that the cost of the program is actually running quite close to the original expectations that set the fee at $185,000.
Many applications have been withdrawn very close to the deadline for receiving their full pre-Initial Evaluation result refund, when one assumes that most of the IE costs have already been incurred.
ICANN has banned dotless gTLDs, putting a halt to Google’s plans to run .search as a dotless search service and confounding the hopes of some portfolio applicants.
ICANN’s New gTLD Program Committee, acting with the powers of its board of directors passed the resolution on Tuesday. It was published this morning. Here’s the important bit (links added):
Resolved (2013.08.13.NG02), in light of the current security and stability risks identified in SAC053, the IAB statement and the Carve Report, and the impracticality of mitigating these risks, the NGPC affirms that the use of dotless domains is prohibited.
The current version of the Applicant Guidebook bans dotless domains (technically, it bans apex A, AAAA and MX records) but leaves the door open for registries to request an exception via Extended Evaluation.
This new decision closes that door.
The decision comes a week after the publication of Carve Systems’ study of the dotless domain issue, which concluded that the idea was potentially “dangerous” and that if ICANN intended to allow them it should do substantial outreach to hardware and software makers, essentially asking them to change their products.
The Internet Architecture Board said earlier that “dotless domains are inherently harmful to Internet security.”
Microsoft, no doubt motivated in part at least by competitive concerns in the search market, had repeatedly implored ICANN to implement a ban on security grounds.
Google had planned to run .search as a browser service that would allow users to specify preferred search engines. I doubt the dotless ban will impact its application’s chances of approval.
Donuts and Uniregistry, which together have applied for almost 400 gTLDs, had also pushed for ICANN to allow dotless domains, although I do not believe their applications explicitly mentioned such services.