Uniregistry, Corp just beat back an objection from Google’s Charleston Road Registry (CRR) Inc. on the new gTLD .cars in a decision handed down by the International Centre for Dispute Resolution (“ICDR”)
CRR objected to Unregistry application for .cars as on the basis of String Confusion to its own application for .car and wanted the two applications to be placed into the same contention set which would have forced Uniregsitry into an auction with Google.
This panel was aware that a previous ruling of another panel; Charleston Road Registry Inc. v. Koko Castle, LLC, In that matter, the Expert held that the new gTLD string applied for and objected to, namely , was not confusingly similar to the gTLD applied for in the same application round by the Objector, who is also the Objector in the instant proceeding.
The panelist specifically acknowledged that if he didn’t follow the ruling in Koko:
“what could result was It was submitted that those consequences were that there would be “two contention sets- (a) one set for .CARS applications only, and (b) one set for a mix of .CAR and .CARS applications”
“The result of the ICANN auction in that circumstance could produce the paradoxical result of two prevailing .CARS TLD applications from the ICANN contention auctions in those two sets, and there is no provision in the ICANN TLD process to address that circumstance. Conflicting results from string contention panels would further bring the consistency and legitimacy of the policy into question.”
However the expert dismissed that argument and decide to rule on the objection independently on its merit:
“The Expert declines to dispose of the instant proceeding by automatically following the determination in Charleston Road Registry Inc. v. Koko Castle, LLC, (supra) and will proceed to make an independent determination on the merits in the instant string confusion objection.”
“It is difficult for the Expert to decide how ICANN might deal with the potential conflicts that the Applicant contends will arise, but the process is ICANN’s, it has control over the entirety of the process, it seems to have contemplated that some such problem may arise during the process and it is ICANN’s role to manage the remainder of the process.”
“Indeed, the parties are bound by ICANN’s process, they have agreed to it by virtue of taking part in it and it would be inappropriate for the Expert to intervene by not making the independent determination that the Applicant Guidebook requires and which the Expert has agreed to give.”
“In addition, the Objector has followed the process that entitles it to an independent decision and it would be a denial of its rights, without justification, in effect to abandon that process and not make an independent determination.”
Personally I’m not sure that ICANN has “contemplated that some such problem may arise during the process” being this problem.
What we have now is Google winning its objection to DERcars application to .Cars so they will be forced to fight Google in an auction for the new gTLD, while Uniregstry and Donuts which beat Google’s objection get to go into auction for .cars
Here is the relevant parts of the rest of the decision.
“”In the present case, to comply with the standards, Charleston Road must prove that the applied for TLD is likely to result in string confusion with the gTLD for which it has applied, namely and within the meaning articulated in the standard. Tn particular, the standard requires the Objector to prove that string confusion is “likely to result.”
This does not weaken the burden on an Objector, but strengthens it.
“For a likelihood of confusion to exist, it must be probable, not merely possible that confusion will ati:Se in the mind of the average, reasonable Internet user.”
Thus, a mere possibility of string confusion is not enough and the time-honored criterion of “probably” must be satisfied; moreover, the probability of confusion must have arisen in the mind of the average, reasonable Internet user.
“The test of whether it is probable that confusion will arise in the mind of the average, reasonable Internet user must be applied judicially and it is not enough to conclude that some one, somewhere will probably be confused by the sting. The test is made more specific than that by requiring that the probable confusion must be in the mind of “the average, reasonable internet user.” The task of the Expert in the present proceeding is therefore to place itself in the position of the average, reasonable internet user and to assess whether such a person would probably be confused by the proposed string.
Then, in this analysis of principles, the question arises: what is string confusion?
To that question the answer is given, as has been noted, in Section 3.5.1 of Module 3, namely that “(s)tring Confusion exists where a string so nearly resembles another that it is likely to deceive or cause confusion.”
Finally, the standards add another cautionary rule in interpreting the Module and in assisting Experts to decide whether in a given case, a likelihood of confusion has been established. This is achieved by reminding the Expert that just because an object reminds one of something else, does not mean that the observer is confused between the two.
It does this by providing: “Mere association, in the sense that the string brings another string to mind, is insufficient to find a likelihood of confusion.” Logically, that is a correct statement and a timely reminder, as is well illustrated by the observation of the court in In re Ferrero, 479 F.2d 1395, 1397 (CCPA 1973) that:
“Seeing a yellow traffic light immediately ‘calls to mind’ the green that has gone and the red that is to come, or vice versa; that does not mean that confusion is being caused. As we are conditioned, it means exactly the opposite.”
The applied for string is . The TLD applied for by the Objector is . The question is therefore whether the string is confusingly similar to the string . The Determination of this Expert is that the string is not confusingly similar to the string .car
That is so for the following reasons:
There are essentially two questions which, to some extent overlap, but they are nevettheless two questions.
The first question that arises is whether the two strings are similar, as defined in the Guidebook.
The second question is whether, if the two strings are similar, are they confusingly so?
As to the first question, the two strings clearly have a common feature, namely the word “car”.
But it is equally clearly ICANN’s intention that in interpreting whether that fact makes the two strings similar, the Expert should use the definition that has been mandated in the Guidebook and repeated. The question is therefore whether the two strings are so similar that they create the probability of user confusion. The Expert’s view on that question is that they are not similar, as they will not probably give rise to user confusion. Users will recognize that one of the strings is singular and one of them is plural and that that difference means that they should regard the two strings as different, as they are. Internet users are now very well aware that, on the internet, small differences in spelling and meaning are significant and that they mean different things, will lead to different destinations such as websites and email destinations and will carry consequences, such as whether communications are genuine and reach their correct destinations. Internet users have become increasingly aware of such differences and are now mature and sophisticated enough to realize it, when they are being presented with such differences; indeed, internet users are so astute to such matters that they now look for them to ensure as best they can that they are not being mislead or deceived.
There will therefore, in the opinion of the Expert, be no probability of user confusion if the two strings are delegated into the root zone.
The second question is whether, if the two strings are similar, are they confusingly similar? This is by far the more significant question. The Expert finds that the string is not confusingly similar to the string . In particular, the opinion of the Expe11is that the Objector has not discharged its burden and its Objection therefore fails.
We have already seen from the Guidebook and the standards that must be applied that the Objector must show:
(a) that the new gTLD is likely to result in string confusion;
(b) that the confusion must arise in the mind of the average, reasonable internet user ; that
(c) string confusion will be said to have arisen where a string so nearly resembles another that it is likely to deceive or cause confusion; beating in mind that mere association, in the sense that the string brings another string to mind, is insufficient to find a likelihood of confusion.
3.5.1 of Module 3:
“”(a) In the opinion of the Expert, the proposed new gTLD is not likely to result in string confusion.
It is of course possible that some internet user will be confused by the two strings.
That does not mean that it is likely and the Expert is of the opinion that it is not likely.
It must be borne in mind that the Guidebook admonishes against finding that there is a mere possibility and then drawing from that finding the conclusion that a possibility makes something likely or probable, as it clearly does not. The possibility identified will, at most, exist only in very few cases and the applied for gTLD .cars will not give rise to string confusion with the .car TLD.
That is so because the reader and the user will appreciate the fact that the two words that constitute the strings, “cars” and “car”, are separate words, with distinct meanings, with each of them being capable of being given their own function, namely that the former invokes cars in general and as a group, while the latter clearly invokes· the concept of a single entity and that there is no reason why they should be understood as regarded as being used, in the internet context, in anything other than those distinct meanings.
Moreover, it must be remembered that when the standard provides that the Objection can succeed only when the new TLD is “likely to result in string confusion” it means “string confusion” as defined. Section 3.5.1 defines string confusion as such a state of resemblance between the two strings “that i t is likely to deceive or cause confusion.” The opinion of the Expet1is that the resemblance between the two strings in question will not deceive or cause confusion among users.
That is so because internet users will appreciate that the words are different, that they have their own meanings, that they are being used as separate TLDs which by necessity must be different and they will also draw on their own experiences of using the internet.That experience tells them that differences in spelling, let alone differences in spelling that constitute different words, have immense consequences when it comes to website addresses, domain names, email addresses, passwords and elsewhere and that a change of one letter, a change in punctuation or even in the case in which a word is typed will mean the difference between using the internet successfully or not.
Because of that experience and because of the times when they have been frustrated in the use of the internet, users are now permanently on the look out for such differences and will be particularly astute to take notice of them. There is therefore an air of unreality in the argument that internet users will think that two proposed new TLDs with resemblances in spelling, but where one of them relates to a singular concept and the other relates to a plural concept, are actually the same as or associated with each other or that there is some connection such that they will be deceived or confused between the one and the other.
The Expert also holds that it is unlikely that string confusion will result in the present case in the mind of the average, reasonable internet user. Indeed, the average, reasonable internet user is less likely to be confused in the way claimed by the Objector than other candidates, because he or she is astute to the basic workings of the internet and knows in particular that even small spelling give average, reasonable internet users the credit that they deserve, as it should not be assumed that if they see the two words, one singular and one plural, they will not appreciate immediately that they are separate words with their own meanings and uses.
It is also one of the characteristics of average, reasonable internet users that they are now, probably more than ever, on their guard and likely to be curious about similarities in spelling and what they signify. Many average, reasonable internet users who have registered a domain name have also had to make a choice about the top level domain in which they register their domain name and are thus aware of differences between the various top level domains and what they signify and are unlikely to be confused between two domains that have respectively a singular and a plural connotation.
Moreover, the average, reasonable internet user is by definition familiar with the internet and the suggestion that internet users cannot tell one TLD from another, even if the spelling is similar, sells their knowledge short and is unjustified. Accordingly, no confusion will arise in the present case in the mind of the average, reasonable internet user between and .car.
The string does not so nearly resemble another that it is likely to deceive or cause confusion. As has been noted above, each string is a separate word and readily recognized as such; each word has a meaning sufficiently different from the other word to give it a unique character. All of these factors support the notion that average, reasonable internet users will appreciate the difference between he two TLDs and accordingly, they will not be deceived or confused.
For reasons of completeness, the Expert also finds on the balance of probabilities and in the present context, that the string does not bring the string to mind, but that if it did, it is by virtue of the express words of the standard insufficient to find a likelihood of confusion.
ICANN’s promotion of the new regime of TLDs has been so prominent and effective that average, reasonable internet users must by now be very aware that there are to be new TLDs and are probably on the lookout for them and the differences in spelling that may accompany them. They are therefore less likely to be confused than might be thought.””
