ICANN Resolutions » BGC Recommendation Regarding Reconsideration Request 13-9, Amazon EU S.á.r.l.
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Resolved (2014.11.07.NG01), the New gTLD Program Committee adopts the BGC Recommendation on Reconsideration Request 13-9, which can be found at http://www.icann.org/en/groups/board/governance/reconsideration/recommen... [PDF, 132 KB].
The Requester Amazon EU S.a.r.l. is an applicant for the TLD in Japanese characters that translate into "online shopping" ("Amazon's Applied-for String"). Commercial Connect LLC ("CC") applied for .SHOP ("CC's Applied-for String"). CC objected to Amazon's Applied-for String, asserting that it was confusingly similar to CC's Applied-for String ("CC's Objection"). The Panel ruled in favor of CC's Objection on the grounds that Amazon's Applied-for String is confusingly similar to CC's Applied-for String. The Requester claims that the Dispute Resolution Provider (ICDR) and the Panel failed to follow the established process for registering and/or accepting CC's Objection. The Requester further claims the Panel applied the wrong standard in evaluating CC's Objection. The Requester asks that ICANN disregard the Panel's Expert Determination, and either instruct a new Panel to review CC's objection with the standards set forth in the Applicant Guidebook or make the necessary accommodations to allow for a "non-discriminatory application of ICANN standards, policies and procedures." (Request, Section 9.)
The BGC concluded that the Requester has not stated proper grounds for reconsideration because there is no indication that either the ICDR or the Panel violated any policy or process in accepting and sustaining CC's Objection. Given this, the BGC recommends that Request 13-9 be denied. The NGPC agrees.
The Requester Amazon EU S.a.r.l. is an applicant for the TLD in Japanese characters that translate into "online shopping" ("Amazon's Applied-for String"). Commercial Connect LLC ("CC") applied for .SHOP ("CC's Applied-for String"). Top Level Domain Holdings Limited ("TLDH") applied for the TLD in Chinese characters that translate into "shopping" ("TLDH's Applied-for String").
CC objected to both Amazon's Applied-for String and TLDH's Applied-for-String, asserting that both strings were confusingly similar to CC's Applied-for String.
On 21 August 2013, the Expert Panel sustained CC's 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 Expert Panel dismissed CC's objection to TLDH's Applied-for-String on the grounds that the two applied-for strings are not confusingly similar and on 4 September 2013, the Requester filed Request 13-9.
The Requester claims that CC failed to provide Amazon with a copy of the objection as required by Article 7(b) of the New gTLD Dispute Resolution Procedure ("Procedure"), and that this failure is a deficiency that cannot be rectified. The Requester further claims that the Panel applied the wrong standard in evaluating CC's Objection. Specifically, the Requester claims that the Panel applied a standard that considered "the use of essentially the same word in two different languages [as] sufficient to cause string confusion among the average, reasonable Internet user," and claims that such a standard would eliminate the need to evaluate translations of words on a case-by-case basis.
The issues for reconsideration are: (1) whether the ICDR and the Panel's acceptance of CC's Objection demonstrate a policy or process violation; and (2) whether the Panel applied the wrong standard in evaluating CC's Objection.
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 NGPC, bestowed with the powers of the Board in this instance, has reviewed and thoroughly considered the BGC Recommendation on Request 13-9 and finds the analysis sound.
Analysis and Rationale
The ICDR and the Panel's Acceptance of Commercial Connect's Objection Does Not Demonstrate A Process Violation.
The BGC concluded, and NGPC agrees, that the ICDR's acceptance of CC's Objection does not demonstrate a policy or process violation, and the Requester has not demonstrated otherwise. The Requester claims that CC failed to provide the Requester with a copy of the objection as required by Article 7(b) of the Procedure, and that this failure is a deficiency that cannot be rectified. The Requester further claims that, pursuant to Article 9(d) of the Procedure, which provides for dismissal of objections that do not comply with Articles 5-8 of the Procedure and where deficiencies have not been cured in the specified timeframe, the ICDR should have dismissed CC's Objection and closed the proceedings. Pursuant to the Procedure, the ICDR was required to perform an administrative review of CC's Objection, and to inform the objector, applicant, and ICANN of the results of its administrative review. (Procedure, Art. 9(a).) The BGC concluded that the available record shows that the ICDR complied with its obligations in this regard. The ICDR's 4 April 2013 email, requesting CC to cure the stated deficiency, was consistent with the process established in the Procedure for the administrative review of objections.
The BGC further noted that the available record demonstrates that the Requester did receive notice that an objection had been filed against it and that the Requester was required to respond to avoid default. The Requester acknowledged receipt of a copy of the objection, and that the ICDR invited the Requester to raise the alleged procedural defects in its response to CC's Objection. The BGC found that the Panel, having received and considered the Requester's claims of procedural deficiencies, rejected the Requester's claims indicating there was no actual prejudice to the Requester. Accordingly, the BGC concluded that the ICDR's acceptance of CC's Objection did not violate any policy or process.
The Requester's Claim That The Panel Applied The Wrong Standard Is Unsupported And Is Not A Basis For Reconsideration.
The BGC concluded, and the NGPC agrees, that the Requester's claim that the Panel applied the wrong standard does not support reconsideration. The BGC noted that the relevant standard for evaluating a string confusion objection is set out in Section 3.5.1 of the Applicant Guidebook and that the Panel referenced and correctly stated the applicable standard more than once in its evaluation of CC's Objection. Based on the parties' contentions, it appears that the Panel concentrated on the meanings of the two strings and identified three related issues that needed to be examined. The BGC determined that the Panel's focus on the meanings of the strings is consistent with the standard for evaluating string confusion objections. A likelihood of confusion can be established with any type of similarity, including similarity of meaning. (Guidebook, Section 126.96.36.199.3.) The BGC further concluded that any claim by the Requester that the Panel must limit itself to a standard of aural or visual similarity is not supported by available documentation, and does not support a finding that the Panel violated any established policy or procedure.
The BGC also noted that, contrary to the Requester's contention, the Panel did not automatically conclude that there was a likelihood of confusion between CC's Applied-for String and Amazon's Applied-for String. Rather, it appears that the Panel conducted a detailed and comprehensive analysis of the issues before reaching its determination.
With respect to the Requester's reliance on another ICDR Panel's determination finding that Top Level Domain Holdings Limited's ("TLDH") application for the TLD in Chinese characters that translate into "shopping" ("TLDH's Applied-for String") is not confusingly similar to CC's application for .SHOP as evidence that the Panel applied the wrong standard, the BGC found that the fact that these two ICDR Panels evaluated potentially similar objections yet came to different conclusions does not mean that one Panel applied the wrong standard. On a procedural level, each 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 both proceedings, the objections were rebutted by different applicants. Thus, the Panels reached different determinations at least in part because the materials submitted by each applicant (Amazon and TLDH) in defense of its proposed strings were different.
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/13-9-2014-02-13-en) or that otherwise relate to Request 13-9. Following consideration of all relevant information provided, the NGPC reviewed and has adopted the BGC's Recommendation on Request 13-9, 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/13-9/re... [PDF, 132 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 13-9 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, one of which is the SCO at issue in Request 13-9, 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. 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's on Request 13-9.
In terms of timing of the BGC's Recommendation, the Bylaws provide that the BGC shall make a final determination or recommendation to the Board [or 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, the first practical opportunity for the BGC to take action on this Request was on 10 October 2013. Additionally, Article IV, Section 2.17 provides that the Board (or 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.