Consideration of Re-evaluation of the Vistaprint Limited String Confusion Objection Expert Determination

Whereas, on 9 October 2015, an Independent Review Process (IRP) Panel issued its Final Declaration in the IRP filed by Vistaprint Limited (Vistaprint) against ICANN wherein the Panel declared ICANN to be the prevailing party and that the Board's actions did not violate the Articles of Incorporation (Articles), Bylaws, or Applicant Guidebook (Guidebook).

Whereas, Vistaprint specifically challenged the String Confusion Objection (SCO) Expert Determination (Expert Determination) in which the Panel found that Vistaprint's applications for .WEBS were confusingly similar to Web.com's application for .WEB (Vistaprint SCO).

Whereas, while the IRP Panel found that ICANN did not discriminate against Vistaprint in not directing a re-evaluation of the Expert Determination, the Panel recommended that the Board exercise its judgment on the question of whether it is appropriate to establish an additional review mechanism to re-evaluate the Vistaprint SCO.

Whereas, in Resolutions 2014.10.12.NG02-2015.10.12.NG03, the New gTLD Program Committee (NGPC) exercised its discretion to address a certain limited number of perceived inconsistent and unreasonable SCO expert determinations that were identified as not being in the best interest of the New gTLD Program and the Internet community ( SCO Final Review Mechanism).

Whereas, the NGPC has already considered the Vistaprint SCO Expert Determination, among other expert determinations, in evaluating whether to expand the scope of the SCO Final Review Mechanism and determined that those other expert determinations, including the Visatprint SCO Expert Determination, did not warrant re-evaluation.

Whereas, pursuant to the recommendations of the IRP Panel in the Final Declaration, the Board has again evaluated whether an additional review mechanism is appropriate to re-evaluate the Vistaprint SCO and resulting Expert Determination.

Resolved (2016.03.03.02), the Board concludes that the Vistaprint SCO Expert Determination is not sufficiently "inconsistent" or "unreasonable" such that the underlying objection proceedings resulting in the Expert Determination warrants re-evaluation.

Resolved (2016.03.03.03), the Board finds, as it has previously found, that ICANN's Bylaws concerning core values and non-discriminatory treatment and the particular circumstances and developments noted in Final Declaration do not support re-evaluation of the objection proceedings leading to the Vistaprint SCO Expert Determination.

Resolved (2016.03.03.04), the Board directs the President and CEO, or his designee(s), to move forward with processing of the .WEB/.WEBS contention set.

Rationale for Resolutions 2016.03.03.02 – 2016.03.03.04
The Board is taking action today to address the recommendation of the Independent Review Process (IRP) Panel (Panel) set forth in its Final Declaration in the IRP filed by Vistaprint Limited (Vistaprint). Specifically, the IRP Panel recommended that the Board exercise its judgment on the question of whether an additional review is appropriate to re-evaluate the Vistaprint String Confusion Objection (SCO) leading to the "Vistaprint SCO Expert Determination."

Background

VistaprintSCO Expert Determination

The background on the Vistaprint SCO Expert Determination is discussed in detail in the Reference Materials and IRP Final Declaration, which is attached as Attachment A to the Reference Materials. The Reference Materials are incorporated by reference into this resolution and rationale as though fully set forth here.

Vistaprint IRP

Vistaprint filed an IRP request challenging ICANN's acceptance of the Vistaprint SCO Expert Determination. In doing so, among other things, Vistaprint challenged procedures, implementation of procedures, and ICANN's purported failure to correct the allegedly improperly issued Expert Determination.

On 9 October 2015, a three-member IRP Panel issued its Final Declaration. After consideration and discussion, pursuant to Article IV, Section 3.21 of the ICANN Bylaws, the Board adopted the findings of the Panel. (See Resolutions 2015.10.22.17 – 2015.10.22.18, available at https://www.icann.org/resources/board-material/resolutions-2015-10-22-en... see also, IRP Final Declaration, available at https://www.icann.org/en/system/files/files/vistaprint-v-icann-final-dec... [PDF, 920 KB].)

In the Final Declaration, the Panel found, among other things, that it did not have the authority to require ICANN to reject the Expert Determination and to allow Vistaprint's applications to proceed on their merits, or in the alternative, to require a three-member re-evaluation of the Vistaprint SCO objections. However, the Panel did recommend that

the Board exercise its judgment on the questions of whether an additional review mechanism is appropriate to re-evaluate the [expert] determination in the Vistaprint SCO, in view of ICANN's Bylaws concerning core values and non-discriminatory treatment, and based on the particular circumstances and developments noted in this Declaration, including (i) the Vistaprint SCO determination involving Vistaprint's .WEBS applications; (ii) the Board's (and NGPC's) resolutions on singular and plural gTLDs, and (iii) the Board's decisions to delegate numerous other singular/plural versions of the same gTLD strings.
(Final Declaration at ¶ 196, available at https://www.icann.org/en/system/files/files/vistaprint-v-icann-final-dec... [PDF, 920 KB].) The Board acknowledged and accepted this recommendation in Resolution 2015.10.22.18. (See https://www.icann.org/resources/board-material/resolutions-2015-10-22-en....)

Confusing Similarity

The Generic Names Supporting Organization's (GNSO) Recommendation on confusing similarity.

In August 2007, the GNSO issued a set of recommendations (approved by the ICANN Board in June 2008) regarding the introduction of new generic top-level domains (gTLDs). The policy recommendations did not include a specific recommendation regarding singular and plural versions of the same string. Instead, the GNSO included a recommendation (Recommendation 2) that new gTLD strings must not be confusingly similar to an existing top-level domain or a reserved name. (See GNSO Final Report: Introduction of New Generic Top-Level Domains, http://gnso.icann.org/en/issues/new-gtlds/pdp-dec05-fr-parta-08aug07.htm.)

The issue of confusing similarity was agreed as part of the Applicant Guidebook and is addressed in the evaluation processes.

As discussed in detail in Reference Materials document related to this paper, and which is incorporated by reference as though fully set forth here, the issue of confusing similarity is addressed in two manners in the evaluation processes – through the String Similarity Review (SSR) process and through the String Confusion Objection process. The objective of this preliminary review was to prevent user confusion and loss of confidence in the DNS resulting from delegation of similar strings. (See Module 2.2.1.1, available at https://newgtlds.icann.org/en/applicants/agb/evaluation-procedures-04jun... [PDF, 916 KB], and Module 3.2.1, available at https://newgtlds.icann.org/en/applicants/agb/objection-procedures-04jun1... [PDF, 260 KB].) The SSR Panel did not find any plural version of a word to be visually similar to the singular version of that same word, or vice versa. (http://newgtlds.icann.org/en/program-status/application-results/similari... [PDF, 168 KB]; http://newgtlds.icann.org/en/announcements-and-media/announcement-01mar1....)

The Board previously addressed the issue of confusing similarity as it relates to singular and plural versions of the same string in response to Governmental Advisory Committee (GAC) advice.

On 25 June 2013, the Board, through the New gTLD Program Committee (NGPC), considered the issue of singular and plural versions of the same strings being in the root in response to the GAC's advice from the Beijing Communiqué. (https://www.icann.org/en/news/correspondence/gac-to-board-18apr13-en.pdf [PDF, 156 KB].) The NGPC determined that no changes are needed to the existing mechanisms in the Guidebook to address the GAC advice relating to singular and plural versions of the same string. (See https://www.icann.org/resources/board-material/resolutions-new-gtld-2013....) As noted in the Rationale for Resolution 2013.06.25.NG07, the NGPC considered several significant factors as part of its deliberations, including the following factors: (i) whether the SSR evaluation process would be undermined if it were to exert its own non-expert opinion and override the determination of the expert panel; (ii) whether taking an action to make program changes would cause a ripple effect and re-open the decisions of all expert panels; (iii) the existing nature of strings in the DNS and any positive and negative impacts resulting therefrom; (iv) whether there were alternative methods to address potential user confusion if singular and plural versions of the same string are allowed to proceed; (iv) the SCO process as set forth in Module 3 of the Guidebook. (See https://www.icann.org/resources/board-material/resolutions-new-gtld-2013... - 2.d.)

The NGPC determined that the mechanisms established by the Guidebook (SSR and SCO) should be unchanged and should remain as the mechanisms used to address whether or not the likelihood potential user confusion may result from singular and plural versions of the same strings.

SCO Final Review Mechanism

As discussed in full in the Reference Materials and incorporated herein by reference, the SCO Final Review Mechanism was established by the NGPC on 12 October 2014, after consultation with the community, to address a very limited set of perceived inconsistent and unreasonable SCO expert determinations. (See https://www.icann.org/resources/board-material/resolutions-new-gtld-2014....) The SCO Final Review Mechanism was not a procedure to address the likelihood of confusion of singular and plural versions of the same string in the root. Rather, it was a mechanism crafted to address two SCO expert determinations (.CAM/.COM and .SHOPPING/.通販expert determinations) that had conflicting expert determinations about the same strings issued by different expert panels, thus rendering their results to be so seemingly inconsistent and unreasonable as to warrant re-evaluation. (NGPC Resolution 2014.10.12.NG03, available at https://www.icann.org/resources/board-material/resolutions-new-gtld-2014....) The NGPC also identified the SCO Expert Determinations for .CAR/.CARS as not in the best interest of the New gTLD Program and the Internet community, which also resulted in opposite determinations by different expert panels on objections to the exact same strings. Because the .CAR/.CARS contention set resolved prior to the approval of the SCO Final Review Mechanism, it was not part of the final review. (See id.)

As part of its deliberations, the NGPC considered and determined that it was not appropriate to expand the scope of the proposed SCO Final Review Mechanism to include other expert determinations such as other SCO expert determinations relating to singular and plural versions of the same string, including the Vistaprint SCO Expert Determination. With respect to its consideration of whether all SCO expert determinations relating to singular and plurals of the same string should be re-evaluated, the NGPC noted that it had previously addressed the singular/plurals issue in Resolutions 2013.06.25.NG07, and had determined "that no changes [were] needed to the existing mechanisms in the Applicant Guidebook . . . ." (https://www.icann.org/resources/board-material/resolutions-new-gtld-2014....)

Analysis

Confusing Similarity as it Relates to Singular/Plurals of the Same String Has Already Been Addressed By The Board.

As discussed above, the NGPC first considered the issue of singular and plural versions of same strings in the root in June 2013 in consideration of the GAC's advice from the Beijing Communiqué regarding singular and plural versions of the same strings. Then, the NGPC determined that no changes were needed to the existing mechanisms in the Guidebook to address the issue. (https://www.icann.org/en/news/correspondence/gac-to-board-18apr13-en.pdf [PDF, 156 KB].) As part of its evaluation, the NGPC considered applicant responses to the GAC advice. The NGPC noted that most were against changing the existing policy, indicating that this topic was agreed as part of the Guidebook and is addressed in the evaluation processes. (https://www.icann.org/resources/board-material/resolutions-new-gtld-2013....) The NGPC also considered existing string similarity in the DNS at the second level and any positive and negative impacts resulting therefrom. At the time, no new gTLD had been delegated, and therefore, there was no evidence of singular and plurals of the same string in the DNS at the top level. To date, seventeen singular/plural pairs have been delegated. The Board is not aware of any evidence of any impact (positive or negative) from having singular and plurals of the same string in the DNS. As such, the evidence of the existence of singular and plural versions of the same string, while it did not exist in June 2015, should not impact the NGPC's previous consideration of this matter.

As the NGPC acknowledged in Resolution 2013.06.25.NG07, the existing mechanisms (SSR and SCO) in the Guidebook to address the issue of potential consumer confusion resulting from allowing singular and plural versions of the same string are adequate. (https://www.icann.org/resources/board-material/resolutions-new-gtld-2013....) These mechanisms are intended to address the issue of confusing similarity at the outset of the application process. A decision to send the Vistaprint SCO Expert Determination back for re-evaluation because there is now evidence of singular and plural versions of the same string in the DNS would effectively strip away the objective function of the evaluation processes that have been set in place, which in the case of a SCO is to evaluate the likelihood of confusion at the outset of the application process, not some time after there has been evidence of delegation of singular and plural versions of the same string. (See Guidebook, Module 3.5.1.) To do so would be to treat Vistaprint differently and arguably more favorably than other applicants, which could be argued to be contradictory to ICANN's Bylaws.

The SCO Final Review Mechanism Does Not Apply to the Vistaprint Expert Determination.

The Board notes that Vistaprint argued in the IRP that the Vistaprint SCO Expert Determination is as equally unreasonable as the .CAM/.COM, .通販/.SHOP, .CARS/CAR Expert Determinations and therefore should be sent back for re-evaluation pursuant to the Final Review Mechanism. (See Final Declaration, ¶¶ 93, 94.) However, theVistaprint SCO Expert Determination is plainly distinguishable from the .CAM/.COM, .通販/.SHOP, .CARS/.CAR expert determinations, and therefore, the reasons warranting re-evaluation as determined by the NGPC in those decisions do not apply to the Vistaprint Expert Determination.

The CAM/.COM, .通販/.SHOP, .CARS/.CAR Expert Determinations were ripe for re-evaluation because those expert determinations involved multiple conflicting SCO determinations issued by different experts on the same strings, thus rendering their results to be so seemingly inconsistent and unreasonable as to warrant re-evaluation. Moreover, the NGPC discussion of the .CARS/.CAR expert determinations in the scope of the SCO Final Review Mechanism was not based on the singular/plural issue, but rather, due to conflicting SCO expert determinations (two expert determinations finding .CARS/.CAR not to be confusingly similar and one finding .CARS/.CAR to be confusingly similar. (See Charleston Road Registry, Inc. v. Koko Castle, LLC SCO expert determination at http://newgtlds.icann.org/sites/default/files/drsp/25sep13/determination... [PDF, 196 KB] (finding no likelihood of confusion between .CARS/.CAR); Charleston Road Registry, Inc. v. Uniregistry, Corp. SCO expert determination at http://newgtlds.icann.org/sites/default/files/drsp/25oct13/determination... [PDF, 7.08 MB] (finding no likelihood of confusion between .CARS/.CAR); and Charleston Road Registry, Inc. v. DERCars, LLC SCO expert determination at http://newgtlds.icann.org/sites/default/files/drsp/14oct13/determination... [PDF, 2.09 MB] (finding likelihood of confusion between .CARS/.CAR).)

Here, none of the factors significant to the NGPC's decision to send the CAM/.COM, .通販/.SHOP, expert determinations back for re-evaluation exist for the Vistaprint Expert Determination. The Vistaprint SCO proceedings resulted in one Expert Determination, in favor of Web.com on both objections. There were no other conflicting SCO expert determinations on the same strings issued by different expert panels ending in a different result. One expert panel had all of the arguments in front of it and considered both objections in concert, and made a conscious and fully informed decision in reaching the same decision on both objections. In this regard, Vistaprint already had the same benefit of consideration of the evidence submitted in both objection proceedings by one expert panel that the CAM/.COM, .通販/.SHOP objections received on re-evaluation. Thus, a re-evaluation of the objections leading to the VistaprintSCO Expert Determination is not warranted because it would only achieve what has already been achieved by having the same expert panel review all of the relevant proceedings in the first instance. Further, as discussed above, the NGPC has already considered the VistaprintSCO Expert Determination as part of its deliberations on the scope of the SCO Final Review Mechanism, and determined that the objection proceedings leading to the Expert Determination did not warrant re-evaluation. Thus, while Vistaprint may substantively disagree with the Expert Determination, there is no evidence that it is "inconsistent" or "unreasonable" such that it warrants re-evaluation.

The Board's evaluation is guided by the criteria applied by the NGPC in reaching its determination on the scope of the Final Review Mechanism, the NGPC's consideration and determination on the existence of singular and plurals of the same word as TLD as set forth in Resolution 2013.06.25.NG07, the GNSO Final Report Introduction of New Generic Top-Level Domains, the Applicant Guidebook, including the mechanisms therein to address potential consumer confusion, the circumstances and developments noted in the Final Declaration, and the core values set forth in Article I, Section 2 of the Bylaws. Applying these factors, for the reasons stated below, the Board concludes that a re-evaluation of the objection proceedings leading to the VistaprintSCO Expert Determination is not appropriate because the Expert Determination is not "inconsistent" or "unreasonable" as previously defined by the NGPC or in any other way to warrant re-evaluation.

The Board considered the following criteria, among others, employed by the NGPC in adopting Resolutions 2014.10.12.NG02 – 2014.10.12.NG03:

Whether it was appropriate to change the Guidebook at this time to implement a review mechanism.
Whether there was a reasonable basis for certain perceived inconsistent expert determinations to exist, and particularly why the identified expert determinations should be sent back to the ICDR while other expert determinations should not.
Whether it was appropriate to expand the scope of the proposed review mechanism to include other expert determinations such as other SCO expert determinations relating to singular and plural versions of the same string, including the VistaprintSCO Expert Determination.
Community correspondence on this issue in addition to comments from the community expressed at the ICANN meetings.
(See https://www.icann.org/resources/board-material/resolutions-new-gtld-2014.... In addition, the Board also reviewed and took into consideration the NGPC's action on the existence of singular and plurals of the same string as a TLD in Resolution 2013.06.25.NG07.

As part of this decision, the Board considered and balanced the eleven core values set forth in Article I, Section 2 of the Bylaws. Article I, Section 2 of the Bylaws states that "situations will inevitably arise in which perfect fidelity to all eleven core values simultaneously is not possible. Any ICANN body making a recommendation or decision shall exercise its judgment to determine which core values are most relevant and how they apply to the specific circumstances of the case at hand, and to determine, if necessary, an appropriate and defensible balance among competing values." (Bylaws, Art. I, § 2, https://www.icann.org/resources/pages/governance/bylaws-en/#I.) Among the eleven core values, the Board finds that value numbers 1, 4, 7, 8, 9, and 10 to be most relevant to the circumstances at hand. Applying these values, the Board concludes that re-evaluation of the objection proceedings leading to the Vistaprint SCO Expert Determination is not warranted.

This action will have no direct financial impact on the organization and no direct impact on the security, stability or resiliency of the domain name system. This is an Organizational Administrative Function that does not require public comment.