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Panels Rule No Confusion Exists Between Singular and Plural New gTLD Strings

Stéphane Van Gelder

If early International Centre for Dispute Resolution decisions are anything to go by, as far as dispute resolution panellists are concerned, singular and plural versions of the same string do not risk causing user confusion.

Tasked with handling string confusion objections under the new gTLD program, the ICDR has just rejected an objection by Google against Donuts' application for .CARS. Google has applied for .CAR.

Amongst Google's arguments in support of their objection:

  • Scores of past UDRP cases have concluded that adding an "s" does not change the meaning of a word and thus renders singular and plural versions of that word confusingly similar.
  • In this case, the strings are phonetically similar, something which UDRP panels also recognize as examples of possible confusion.

  • The risk of confusion is heightened for non-English speakers, who can be expected to have difficulty in distinguishing plural and singular forms of the same word.

Donuts countered that the new gTLD program has a built-in presumption that a new gTLD should be granted unless an objector can clearly show that it should not. Donuts also suggested that:

  • Trademark related arguments do not count in this case because "car" is a generic word that cannot be trademarked.
  • ICANN's own string similarity review did not put singular and plural strings in contention sets and its panels found that .CAR and .CARS were not visually similar.
  • Google as objector in this case cannot prove that the two strings are similar enough to yield Internet user confusion.
    There are many examples of peaceful coexistence of singular and plural strings at the second level, such as car.com and cars.com. Here Donuts provides an interesting statistic that "some 50,886 singular/plural string pairs currently exist which do not point to the same IP address, compared to 1,330 pairs which do."
  • Singular and plural versions of the same word are actually easier to distinguish at the top level. Donuts provides the example that "hot.car" vs. "hot.cars" are easier to distinguish than "hotcar.com" vs. "hotcars.com".
  • Cars and car may not always mean the same thing, with car meaning different things in French, Croatian and Serbian for example.

With a reminder that, for a dispute resolution panel to consider that a string is likely to result in user confusion, "the quantum of proof necessary to sustain a string confusion is therefore established at the level of probability, not mere possibility" the ICDR panel ruled against the objector Google.

The panel accepts that it is possible to object based on any three types of similarity: visual, aural, or in meaning. "Having said that, it does not logically follow that any one of these grounds of similarity alone would automatically result in having such an objection granted. For example, ".car" and ".automobile" have the same meaning in English. An objection to a ".car" string based on similarity of meaning alone with an ".automobile" string would not show a real probability that confusion between the two terms would arise in the mind of the average internet user, since these strings look and sound entirely different. It is when there is a confluence of all three types of similarity (visual, aural, meaning) that it becomes most probable that such confusion will occur."

The panel ruled that Google had not adequately shown a real risk of visual similarity between .CARS and .CAR, whilst Donuts had made a strong case for existing peaceful coexistence between singular and plural strings at the second level. The panel further felt that Donuts' point that the risk of confusion actually decreases at the top level to be valid.

In the end, although the panel did recognize the existence of some risk of user confusion, it felt that Google as objector in this case had not "met its heavy burden of proving that there is a probability, not just a possibility, or aural and/or visual similarity" between the two strings being discussed.

Google's objection was therefore dismissed and Donuts prevailed.

Another case, pitting Booking.com's .HOTELS against HOTEL Top-Level-Domain s.a.r.l who applied for .HOTEL, also went the objection being dismissed and the applicant prevailing.

By Stéphane Van Gelder, Consultant
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