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Panel throws out ludicrous .shop confusion ruling

Kevin Murphy, August 25, 2015, Domain Registries

The new gTLD strings .shop and .通販 are not too confusingly similar-looking to coexist on the internet.

While that may be blindingly obvious to anyone who is not already blind, it’s taken the ICANN process three years to arrive at this conclusion.

An August 18 ruling by a three-person International Centre for Dispute Resolution appeals panel has “reversed, replaced and superseded” a two-year-old decision by a lone String Confusion Objection panelist. The appeals panel found:

the [original] expert panel could not have reasonably come to the decision reached by it in connection with the underlying String Confusion Objection

The two strings indisputably have no visual or aural similarity, are in different languages, written in different scripts that look very different, and have different phonetic spellings and pronunciations.

.通販 is the Japanese for “.onlineshopping”, applied for by Amazon in the 2012 new gTLD round.

.shop is a contested string applied for by Commercial Connect and others.

The two strings were ruled dissimilar by the String Similarity Panel in February 2013, but Commercial Connect filed the SCO a few weeks later.

In an SCO, the complainant must show that it is “probable, not merely possible” that the two strings will get mixed up by internet users.

In August 2013, ICDR panelist Robert Nau ignored that burden of proof and inexplicably ruled that the two strings were too similar to coexist and should therefore be placed in a contention set.

Nau would later rule that .shop and .shopping are also confusingly similar.

The .通販 decision was widely criticized for being completely mad.

Amazon appealed the decision via the ICANN Request for Reconsideration, but predictably lost.

After much lobbying, last October ICANN’s board of directors created an appeals process for SCO decisions, but limited the appellant pool to Amazon with .通販 and applicants for .cam (which had been ruled similar to .com).

Now, 10 months later, we finally have a sane decision in the Amazon case. Its application will presumably now be removed from the .shop contention set.

Read the final ruling here.

Two new gTLD confusion decisions thrown out

Kevin Murphy, October 15, 2014, Domain Policy

ICANN has reopened the contention sets for .cam and .通販 after deciding that two String Confusion Objection panels may have been wrong to reject certain applications.

Two rulings — that .cam is confusingly similar to .com and that .通販 is confusingly similar to .shop (really) — will now head to an appeals panel for a “final” determination.

The decision was made by the ICANN board’s New gTLD Program Committee this week at the ICANN 51 public meeting in Los Angeles.

The first case being reopened for scrutiny is Verisign versus Rightside, where the original SCO panel found that .cam and .com were too similar to coexist on the internet.

But a different panelist found that the two strings were not confusingly similar in objections filed by Verisign against two other applicants — Dot Agency and AC Webconnecting.

The opposing rulings meant that Rightside’s application would have been kicked out of the .cam contention set, which hardly seems fair.

This and many other “perceived inconsistencies” led to the ICANN board being pressured to come up with some kind of appeals process, which it agreed to do in February.

Verisign, unfairly in my view, was not given the opportunity to appeal the two .cam decisions that went against it, even though they were made by the same panelist for the same reasons.

The second, altogether more peculiar, case was .shop applicant Commercial Connect versus .通販 applicant Amazon.

The panelist in that case seemed to have checked his brain at the door that day, concluding that the two strings are confusingly similar simply because 通販 means “online shopping” in Japanese.

Another panelist, in a different case also involving Commercial Connect, had found that .购物 (Chinese for “shopping”) was not confusingly similar to .shop because duh.

ICANN’s NGPC has now decided that the two controversial decisions are “not being in the best interest of the New gTLD Program and the Internet community”.

Both .cam and .通販 will now be referred to a three-person panel at the International Center for Dispute Resolution, the same body that processed the original objections, for a final determination.

Panel slaps ICANN in .africa case

Kevin Murphy, August 18, 2014, Domain Policy

A panel of arbitrators had some stern words for ICANN as it handed controversial .africa gTLD applicant DotConnectAfrica another win in its Independent Review Process case.

In a 33-page procedural ruling (pdf) published by ICANN late Friday, the IRP panel disagreed with ICANN’s lawyers on almost every argument they made, siding with DCA instead.

The panel strongly indicated that it believes ICANN has attempted to render the IRP toothless, after losing the first such case against ICM Registry a few years ago.

The ruling means that ICANN’s top executives and board may have to face hostile cross-examination by DCA lawyers, rather than simply filing written statements with the panel.

It also means that whatever the IRP panel ultimately decides will in all likelihood be binding on ICANN.

DCA filed the IRP with the International Center for Dispute resolution after ICANN, accepting Governmental Advisory Committee advice, rejected the company’s application for .africa.

The ICDR panel has not yet ruled on the merits of the case — personally, I don’t think DCA has a leg to stand on — but last week’s ruling is certainly embarrassing for ICANN.

On a number of counts, ICANN tried to wriggle out of its accountability responsibilities, the ruling suggests.

Primarily, ICANN lawyers had argued that the eventual outcome of the IRP case should be advisory, rather than binding, but the panel disagreed.

The panel noted that new gTLD applicants sign away their rights to sue when they apply for a gTLD, meaning IRP is their last form of appeal against rejection.

It also called into question ICANN’s ability to police itself without a binding decision from an independent third party, pointing to previously reported accountability problems (my emphasis):

The need for a compulsory remedy is concretely shown by ICANN’s longstanding failure to implement the provision of the Bylaws and Supplementary Procedures requiring the creation of a standing panel. ICANN has offered no explanation for this failure, which evidences that a self-policing regime at ICANN is insufficient. The failure to create a standing panel has consequences, as this case shows, delaying the processing of DCA Trust’s claim, and also prejudicing the interest of a competing .AFRICA applicant.

Moreover, assuming for the sake of argument that it is acceptable for ICANN to adopt a remedial scheme with no teeth, the Panel is of the opinion that, at a minimum, the IRP should forthrightly explain and acknowledge that the process is merely advisory. This would at least let parties know before embarking on a potentially expensive process that a victory before the IRP panel may be ignored by ICANN.

The decision is the opposite of what the IRP panel found in the ICM Registry case, which was ruled to be “non-binding” in nature.

While deciding that its own eventual ruling will be precedential, the panel said it did not have to follow the precedent from the ICM case, due to changes made to the IRP procedure in the meantime.

ICANN had also argued against the idea of witnesses being cross-examined, but the panel again disagreed, saying that both parties will have the opportunity “to challenge and test the veracity of statements made by witnesses”.

The hearing will be conducted by video ink, which could reduce costs somewhat, but it’s not quite as streamlined as ICANN was looking for.

Not only will ICANN’s top people face a grilling by DCA’s lawyers, but ICANN’s lawyers will, it seems, get a chance to put DCA boss Sophia Bekele on the stand.

I’d pay good money for a ticket to that hearing.

ICANN reveals gTLD objections appeals process

Kevin Murphy, February 12, 2014, Domain Policy

Two new gTLD applicants would get the opportunity to formally appeal String Confusion Objection decisions that went against them, under plans laid out by ICANN today.

DERCars and United TLD (Rightside), which lost SCOs for their .cars and .cam applications respectively, would be the only parties able to appeal “inconsistent” objection rulings.

DERCars was told that its .cars was too similar to Google’s .car, forcing the two bids into a contention set. But Google lost similar SCO cases against two other .cars applicants.

Likewise, Rightside’s .cam application was killed off by a Verisign SCO that stated .cam and .com were too similar, despite two other .cam applicants prevailing in virtually identical cases.

Now ICANN plans to give both losing applicants the right to appeal these decisions to a three-person panel of “Last Resort” operated by the International Centre for Dispute Resolution.

ICDR was the body overseeing the original SCO process too.

Notably, ICANN’s new plan would not give Verisign and Google the right to appeal the two .cars/.cam cases they lost.

Only the applicant for the application that was objected to in the underlying SCO and lost (“Losing Applicant”) would have the option of whether to have the Expert Determination from that SCO reviewed.

There seems to be a presumption by ICANN already that what you might call the “minority” decision — ie, the one decision that disagreed with the other two — was the inconsistent one.

I wonder if that’s fair on Verisign.

Verisign lost two .cam SCO cases but won one, and only the one it won is open for appeal. But the two cases it lost were both decided by the same ICDR panelist, Murray Lorne Smith, on the same grounds. The decisions on .cam were really more 50-50 than they look.

According to the ICANN plan, there are two ways an appeal could go: the panel could decide that the original ruling should be reversed, or not. The standard of the review is:

Could the Expert Panel have reasonably come to the decision reached on the underlying SCO through an appropriate application of the standard of review as set forth in the Applicant Guidebook and procedural rules?

The appeals panelists would basically be asked to decide whether the original panelists are competent or not.

If the rulings were not reversed, the inconsistency would remain in place, making the contention sets for .car, .cars and .cam stay rather confusing.

ICANN said it would pay the appeals panel’s costs.

The plan (pdf) is now open for public comment.

ICANN looking into string confusion confusion

Kevin Murphy, September 18, 2013, Domain Policy

ICANN is looking at “consistency issues” in new gTLD String Confusion Objections, program manager Christine Willett said in an ICANN interview published last night.

The nature of the probe is not clear, but ICANN does appear to be working with the dispute resolution provider, the International Centre For Dispute Resolution, on the issue.

In the interview, Willett said:

Staff is working diligently with dispute resolution service providers to ensure that all procedures have been followed and to look at the expert determinations — we’re looking at these consistency issues.

The SCO has come in for tonnes of criticism due to the conflicting and downright ludicrous decisions made by panelists.

I would hope that ICANN is looking beyond just whether “all procedures have been followed”, given that the root cause of the consistency problems appears to be the lack of guidance for panelists in the policy itself.

Also in the interview, Willett said that she expects the first new gTLDs to be “in production” before the end of the year, and guessed that the second round of applications “is a couple of years down the road”.

Watch it here:

Famous Four says that Demand Media’s .cam should be rejected

Kevin Murphy, September 6, 2013, Domain Policy

Demand Media’s application for .cam should be rejected because it lost a String Confusion Objection filed by .com registry Verisign, according to rival applicant Famous Four Media.

“The process in the applicant guidebook is now clear: AC Webconnecting and dot Agency Limited proceed to resolve the contention set, and United TLD’s application cannot proceed,” chief legal officer Peter Young told DI.

dot Agency is Famous Four’s applicant for .cam, which along with AC Webconnecting survived identical challenges filed by Verisign. United TLD is the applicant subsidiary of Demand Media.

Serious questions were raised about the SCO process after two International Centre for Dispute Resolution panelists reached opposition conclusions in the three .cam/.com cases last month.

Demand Media subsequently called for an ICANN investigation into the process, with vice president Statton Hammock writing:

String confusion objections are meant to be applicant agnostic and have nothing to do with the registration or use of the new gTLD.

However, Famous Four thinks it has found a gotcha in a letter (pdf) written by a lawyer representing Demand which opposed consolidation of the three .cam cases, which stated:

Consolidation has the potential to prejudice the Applicants if all Applicants’ arguments are evaluated collectively, without regard to each Applicant’s unique plan for the .cam gTLD and their arguments articulating why such plans would not cause confusion.

In other words, Demand argued that the proposed usage of the TLD should be taken into account before the ICDR panel ruled against it, and now it saying usage should not have been taken into account.

Famous Four’s Young said:

Whether or not one ascribes to the view that usage should not be taken into account, and we believe that it should (otherwise we would not have argued it), the fact is that United TLD were very explicit prior to the publication that usage should indeed be taken into account.

The SCO debate expanded yesterday when the GNSO Council spent some time discussing .cam and other SCO discrepancies during its regular monthly meeting.

Concerns are such that the Council intends to inform the ICANN board of directors and its New gTLD Program Committee that it is looking into the issue.

The NGPC, has “Update on String Similarity” on its agenda for a meeting on Tuesday, which will no doubt try to figure out what, if anything, needs to be done.

All gTLD confusion decisions in one handy chart

Kevin Murphy, August 27, 2013, Domain Registries

Dirk Krischenowski of DotBerlin has produced an interesting chart plotting all the new gTLD string confusion decisions to come out of ICANN and its objection panels to date.

He’s kindly allowed us to reproduce it here. Click to enlarge.

Each string-pair’s percentage of similarity, as determined by the Sword algorithm, determines its position on the Y-axis, while the color of the circle indicates which way the decision went.

It’s a nice way of visualizing the fact that while Sword may have been instructive in the String Similarity Panel’s determinations it’s not an overwhelming factor in String Confusion Objection decisions made by International Centre for Dispute Resolution panelists.

You can download the chart as a PDF here.

Panel says .sport and .sports are confusingly similar

Kevin Murphy, August 22, 2013, Domain Registries

Olympics-backed new gTLD applicant SportAccord has won a String Confusion Objection against Donuts, with an arbitration panel finding that .sport and .sports are too similar to coexist.

It’s the second SCO case involving a plural to go against Donuts, after the shock .pet/.pets decision last week.

While the judgment is sure to fuel the debate about singular and plural gTLD coexistence, the strings in question in this case do have some unique characteristics.

As panelist M Scott Donahey noted, .sport is both singular and a collective noun, making it essentially a plural and synonymous with .sports.

The sentences “I like sports” and “I like sport” both make sense and mean the same thing. The same could not be said for, for example, “I like car” or “I like pet”.

Donahey was also persuaded by the argument that because “sport” is also a French word meaning the same thing, the fact that “sports” and “sport” are pronounced the same in French means the two strings confusingly similar aurally. He wrote:

The convergence of all these similarities, the fact that the words look very similar in English and sound the same in French, and that the words can be used interchangeably as nouns in English to indicate the panorama of sporting activities, and that the words are interchangeable when used as adjectives in English, all lead the Expert to conclude that it is probable that confusion will arise in the mind of the average, reasonable internet user.

The panelist had access to the rulings in the .pets v .pet case (cited by SportAccord) and the .car v cars case (which went the other way and was cited by Donuts).

Donahey’s ruling is notable also because of what he explicitly declined to consider, namely: the possible harms that could be created by string confusion. He wrote:

Objector’s many references to possible fraud, deceit, cybersquatting or other types of abuse through the use of the gTLD proposed by Applicant are in the nature of a legal rights objection, and mere speculation, and are unworthy of any consideration by an Expert in a string confusion analysis.

In other words, he focused just on the visual, aural and semantic similarity of the two strings. It’s going to be hard for anyone to argue that he overstepped the bounds of an SCO, which has happened following other decisions.

All in all it seems like a pretty sensible decision (pdf). It’s hard to fault Donahey’s logic.

(As an aside, I’ve started to notice that the SCO decisions with the soundest reasoning seem to be coming from panelists, such as Donahey, with extensive experience adjudicating UDRP complaints).

If the ruling stands — that is, if ICANN does not reopen the plurals/singulars policy debate — Donuts’ application for .sports will be forced into a contention set with the two applications for .sport.

String confusion in disarray as Demand’s .cam loses against Verisign’s .com

Kevin Murphy, August 20, 2013, Domain Policy

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

Kevin Murphy, August 16, 2013, 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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