BGC Recommendation Regarding Reconsideration Request 13-10, Commercial Connect, LLC

Brief Summary

The Requester Commercial Connect LLC ("Requester" or CC") applied for the .SHOP string ("CC's Applied-for String"). Top Level Domain Holdings Limited ("TLDH") applied for the gTLD in Chinese characters that translate into "shopping" ("TLDH's Applied-for String"). Amazon EU S.a.r.l. applied for the gTLD in Japanese characters that translate into "online shopping" ("Amazon's Applied-for String"). CC objected to both TLDH's Applied-for String and Amazon's Applied-for String, asserting that both strings were confusingly similar to CC's Applied-for String. The ICDR ruled in favor of CC on its objection to Amazon's Applied-for String on the grounds that Amazon's Applied-for String is confusingly similar to CC's Applied-for String. A different ICDR Expert Panel dismissed CC's objection to TLDH's Applied-for String on the grounds that TLDH's Applied-for String was not confusingly similar to CC's Applied-for String. The Requester claims that both Expert Panels failed to follow the appropriate process in evaluating the merits of the objections by applying the Applicant Guidebook in an inconsistent manner. The Requester also claims that ICANN staff's failure to provide clear and well-defined guidance to the Panels and failure to ensure that the Panels complied with the guidelines constituted a material failure of process resulting in inconsistent decisions by the Panels.

The BGC concluded the Requester has not stated proper grounds for reconsideration. There is no indication that either panel violated any policy or process and there is similarly no indication that ICANN acted inconsistent with any established policy or procedure. Given this, the BGC recommends that Request 13-10 be denied. The NGPC agrees.
Facts
Relevant Facts

The Requester Commercial Connect LLC ("Requester" or "CC") applied for the .SHOP string ("CC's Applied-for String"). Top Level Domain Holdings Limited ("TLDH") applied for a gTLD in Chinese characters that translate into "shopping" ("TLDH's Applied-for String"). Amazon EU S.a.r.l. applied for the gTLD in Japanese characters that translate into "online shopping" ("Amazon's Applied-for String").

The Requester objected to both TLDH's Applied-for String and Amazon's Applied-for String, asserting that both strings were confusingly similar to CC's Applied-for String; TLDH and Amazon each filed responses in separate proceedings.

On 8 August 2013, ICDR's appointed panelist rendered an expert determination on CC's objection to TLDH's Applied-for String ("TLDH Expert Determination"). The Panel ("TLDH Panel") dismissed CC's objection on the grounds that the two applied-for strings are not confusingly similar to the average, reasonable Internet user under the standard set forth in the New gTLD Dispute Resolution Procedure ("Procedure") and the Applicant Guidebook ("Guidebook").

Separately, for the Requester's objection to Amazon's Applied-for String, a different ICDR panel ("Amazon Panel") sustained CC's objection on the grounds that the two applied-for strings are confusingly similar ("Amazon Expert Determination").

On 5 September 2013, the Requester filed Request 13-10.
Requester's Claims

The Requester claims that both the TLDH and the Amazon Panels failed to follow the appropriate process in evaluating the merits of the objections by applying the Guidebook in an inconsistent manner. The Requester claims that ICANN staff's failure to provide clear and well-defined guidance to the Panels and failure to ensure that the Panels complied with the guidelines constituted a material failure of process resulting in inconsistent decisions.
Issues

The issues for reconsideration are: (1) whether the purported inconsistencies between expert determinations demonstrate a policy or process violation; and (2) whether ICANN's alleged failure to provide guidance to the Panels supports Reconsideration.
The Relevant Standards for Evaluating Reconsideration Requests

ICANN's Bylaws call for the BGC to evaluate and make recommendations to the Board with respect to Reconsideration Requests. See Article IV, Section 2 of the Bylaws. The New gTLD Program Committee ("NGPC"), bestowed with the powers of the Board in this instance, has reviewed and thoroughly considered the BGC Recommendation on Request 13-10 and finds the analysis sound.
Analysis and Rationale
The Purported Inconsistencies Between Expert Determinations Do Not Demonstrate A Process Violation.

The BGC concluded, and the NGPC agrees, that the fact that two different expert panels came to different conclusions does not mean that the panels inconsistently applied the standard for evaluating string confusion objections, nor does it establish a policy or process violation. CC relies on Section 2.2.1.1.3 of the Guidebook, which states that a string confusion objection may be based on any type of similarity, including visual, aural or similarity of meaning. CC contends that the TLDH Panel determined that "the guidelines do not permit confusion to be based on meaning alone" when evaluating an application for Internationalized Domain Names with foreign characters, while the Amazon Panel determined the "use of essentially the same word in two different languages is sufficient to cause string confusion." (Request, Pg. 5.) The BGC noted that each expert panel generally rests its determination on the materials presented to it by the parties to that particular objection, and the objector bears the burden of proof. Two panels confronting nearly identical issues could rightfully reach different determinations, based on the strength of the materials presented. While CC was the objector in each of these determinations, each objection was rebutted by a different applicant. Thus, the panels reached different decisions at least in part because the materials submitted by each applicant (TLDH and Amazon) in defense of its proposed string were different, and not because one panel violated any established policy or process in reaching its determination.

The BGC further noted that the TLDH Panel dismissed CC's objection not because it concluded that translations of essentially the same word are insufficient to cause string confusion – as CC contends – but because TLDH presented convincing evidence that there was little likelihood of confusion between CC's Applied-for String and TLDH's Applied-for String.

Accordingly, the BGC determined, and the NGPC agrees, that CC has not been able to establish an actual policy or process that either panel failed to follow. The Request instead challenges the substantive determinations of the panels rather than the processes by which the panels reached their determinations. While CC may disagree with the TLDH Panel's findings, Reconsideration is not available as a mechanism to re-evaluate the substantive determination of the TLDH Panel.
ICANN's Alleged Failure To Provide Guidance To The Panels Does Not Support Reconsideration.

The BGC concluded, and the NGPC agrees, that CC does not identify any established policy or process that required ICANN to take action above the action it has already taken in implementing the New gTLD Program. CC's disagreement as to whether the standards should have resulted in the TLDH Panel dismissing CC's objection does not mean that ICANN violated any policy or process in accepting the decision (nor does it support a conclusion that either panel's decision was wrong). The Guidebook sets out the standards used to evaluate and resolve objections. The TLDH Expert Determination and the Amazon Expert Determination reflect that the panels followed the evaluation standards.

The BGC also found that ICANN's acceptance of the determinations as advice to ICANN is also in accordance with the established process. (Guidebook, Section 3.4.6.) CC's attempt to claim here that the procedures set forth in the Guidebook for evaluating string confusion objections, which followed years of inclusive policy development and implementation planning, are somehow deficient because of allegedly inconsistent expert determinations is therefore not supported and should be rejected.
Decision

The NGPC had the opportunity to consider all of the materials submitted by or on behalf of the Requestor (see https://www.icann.org/resources/pages/13-10-2014-02-13-en) or that otherwise relate to Request 13-10. Following consideration of all relevant information provided, the NGPC reviewed and has adopted the BGC's Recommendation on Request 13-10, which shall be deemed a part of this Rationale and the full text of which can be found at https://www.icann.org/en/groups/board/governance/reconsideration/13-10/r... [PDF, 113 KB].

Although there are no grounds for reconsideration presented in this matter, following additional discussion of the matter, the BGC recommended that staff provide a report to the NGPC setting out options for dealing with the situation raised within this Request, namely the differing outcomes of the String Confusion Objection Dispute Resolution process in disputes similar to that of Amazon's Applied-for String and TLDH's Applied-for String. As a result, the NGPC postponed its consideration of Request 13-10 pending the NGPC's completion of its consideration of how to address concerns of perceived inconsistent SCO Expert Determinations. At its 5 February 2014 meeting, the NGPC directed the President and CEO to initiate a public comment period on framework principles of a proposed SCO Review Mechanism, which was the subject of public comment (see https://www.icann.org/en/system/files/files/report-comments-sco-framewor... [PDF, 166 KB]).

After careful consideration of the report that the BGC asked staff to draft regarding Reconsideration Request 13-9 and 13-10, the public comments received regarding a proposed SCO Review Mechanism, other comments provided to the NGPC for consideration, as well as the processes set out in the Guidebook, at its 12 – 14 October 2014 meeting, the NGPC concluded its consideration of the perceived inconsistent or otherwise unreasonable SCO Expert Determinations. At that time, the NGPC identified two specific SCO Expert Determinations as not in the best interest of the New gTLD Program and the Internet community. The NGPC directed that these Expert Determinations be sent back to the ICDR for a three-member panel evaluation to render a final Expert Determination. Of significance to this Reconsideration Request, the NGPC specifically directed review of the Expert Determination concerning Amazon's Applied-for String (at issue in Request 13-9), and in so doing, the NGPC recommended that the three-member panel also review as background the Expert Determination concerning TLDH's Applied-for String. As part of its rationale, the NGPC acknowledged that on balance, adopting the SCO Review Mechanism would not be appropriate for the current round of the New gTLD Program, but recommended that the development of rules and processes for future rounds of the New gTLD Program (to be developed through the multi-stakeholder process) should explore whether there is a need for a formal review process with respect to Expert Determinations. The NGPC noted that it would now resume its consideration of the BGC Recommendation on Reconsideration Request 13-10.

In terms of timing of the BGC's Recommendation, Section 2.16 of Article IV of the Bylaws provides that the BGC shall make a final determination or recommendation to the Board [or the NGPC as appropriate] with respect to a Reconsideration Request within thirty days following receipt of the request, unless impractical. See Article IV, Section 2.16 of the Bylaws. To satisfy the thirty-day deadline, the BGC would have to have acted by 4 October 2013. Due to the number of Reconsideration Requests submitted between September through October 2013, the first practical opportunity for the BGC to take action on this Request was on 11 October 2013. Additionally, Article IV, Section 2.17 provides that the Board (or the NGPC in this case) shall issue its decision on the recommendation of the BGC within 60 days of receipt of the Reconsideration Request or as soon thereafter as feasible. Due to the NGPC's consideration of how to handle perceived inconsistent SCO Expert Determinations, including the proposed SCO Review Mechanism and the public comment on the proposal, it was impractical for the NGPC to consider the Request sooner than now.

Adopting the BGC's recommendation has no direct financial impact on ICANN and will not negatively impact the systemic security, stability and resiliency of the domain name system.

This decision is an Organizational Administrative Function that does not require public comment.