A couple of weeks ago we told you we were hearing that Verisign filed objections to new gTLD strings that they believe are confusing to .com or .net for which Verisign is the registry including .Cam, .Bom, .Vet, .Company, .Network.
As of today the objections are still not showing up on the on the site of the provider where the objection was filed but TheDomains.com got some detailed information on what Verisign is providing to the International Centere For Dispute Resolution, in support to their objections in this case on the new gTLD .Cam.
Tonight we are publishing Verisign’s Objection which contains the grounds on which they are objection to the .Cam new gTLD. Tomorrow we will publish the affidavits and study the objection refers to.
Here is the edited objection of Verisign (legal references have not largely been included nor the name of the applicant and identifying information, and some background information on Verisign has been omitted)
The Applicant’s use of “.Cam” as the name of a new TLD would create confusion among Internet users.
II. Legal Background on the Meaning of Similarity and Confusion.
According to the Dispute Resolution Procedures set forth in ICANN’s gTLD Applicant Guidebook, “[s]tring confusion exists where a string so nearly resembles another that it is likely to deceive or cause confusion.” gTLD Applicant Guidebook (v. 2012-06-04), Module 3, Section 3.5.1. ”
In this Applicant Guidebook, ‘similar’ means strings so similar that they create a probability of user confusion if more than one of the strings is delegated into the root zone.”
“For a likelihood of confusion to exist, it must be probable, not merely possible that confusion will arise in the mind of the average, reasonable Internet user.”
The standards articulated in the ICANN Dispute Resolution Procedures reflect and parallel long-established standards governing likelihood of confusion that have developed under U.S. trademark law and trademark law more broadly.
Indeed, the ICANN standards expressly refer to the trademark law concept of “likelihood of confusion.”
Similarly, the ICANN standards require a probability of confusion, which reflects trademark law standards.
The well-established trademark law tests for determining similarity and likelihood of confusion are persuasive in assessing string confusion.
As under trademark law, the Applicant Guidebook makes it clear that the likelihood of confusing similarity must consider more than mere visual similarity, although visual similarity is an important consideration. The Applicant Guidebook expressly states that with regard to objections based on string confusion, “[s]uch category of objection is not limited to visual similarity. Rather, confusion based on any type of similarity (including visual, aural, or similarity of meaning) may be claimed by an objector.”
This is essentially the same test for similarity applied under U.S. trademark law.
As explained below, similar standards also are applied under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) adopted by ICANN.
1. Visual Similarity
In trademark law, visual similarity is generally “not a binary factor but is a matter of degree.” In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003). For example, in applying the U.S. federal anti-cybersquatting law– which is directed at preventing the use of domain names that are confusingly similar to trademarks and person’s names– it is recognized that a “slight spelling variation will not prevent a finding of confusing similarity.” 4 J. McCarthy, McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION,§ 25:78 (4th ed. 2012) (“McCarthy”).
Similarly, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions explains that a domain name consisting of the addition of a common, dictionary, descriptive, or negative/pejorative term, to a name, would be considered confusingly similar to a complainant’s trademark under the UDRP.
“Panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP’s first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name.”
Applying this standard, as explained more fully below, it is clear that there is a visual similarity between .com and .cam.
2. Phonetic Similarity
Even if two words are generally distinguishable visually to the eye, the two words may sound the same to the ear. When evaluating phonetic similarity, the focus must be on how the word is pronounced by the public rather than what constitutes a “correct” pronunciation.
The names of TLDs commonly are pronounced in numerous contexts, including as part of second level domain names, in radio advertisements, and in everyday speech concerning the commercial Internet. Based on these considerations, and as detailed below, there is phonetic similarity between .com and .cam.
3. Similarity of Meaning
The mental impact of a similarity of meaning must be considered in assessing whether similarity will result in user confusion. ”The use of a designation which causes confusion because it conveys the same idea, or stimulates the same mental reaction, or has the same meaning is enjoined on the same basis as where the similarity goes to the eye or the ear.”
Here, .cam possesses no meaning, obvious or otherwise, which would serve to distinguish the letter strings .cam and .com, and therefore, there is no difference in meanings.
4. Similarity Is Evaluated Based on Context and Overall Impressions
In judging similarity, words or marks should be considered as they are encountered in the marketplace, taking into account the normal circumstances surrounding how they are used.
Thus, if a user hears a word as much as he or she sees the word, phonetic and visual similarity can lead to confusion. With regard to how users will encounter and interact with TLDs, the growing importance of voice-controlled computing demonstrates that similarity of sound is and will remain an important consideration.
In determining whether two marks are confusingly similar, a court “must ‘appraise the overall impression created by … the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers.”‘
Further, “a court should look at the general impression created by the marks, taking into account all factors that potential purchasers will likely perceive and remember.”
In Continental Connector Corp. v. Continental Specialties Corp., where “CSC” was held to be confusingly similar to “CCC,” the court reasoned: “Initials, by their very nature, are abbreviations, a shortened version designed to be comprehended at a glance. If the number of letters is the same, and there is a significant overlap in the letters used, that is generally sufficient to sustain a claim of similarity.”
“Trademark law has traditionally spelled out a list of foundational factors to be considered in determining the presence or absence of a likelihood of confusion.”
These tests are substantially applicable here.
The general factors used by United States federal courts in assessing likelihood of confusion include: (1) similarity of the marks, (2) strength of the mark, (3) type of goods and the degree of care likely to be exercised by the purchaser, (4) marketing channels used, (5) evidence of actual confusion, (6) defendant’s intent in selecting the mark, and (7) likelihood of expansion of the product lines.
1. Strength of the Mark/Word
In terms of a mark’s strength, “[d]istinctiveness on the scale of trademarks is one measure of a mark’s strength. Commercial strength, or marketplace recognition of the mark, is another.”
Therefore, in assessing likelihood of confusion, one factor that should be considered is the commercial strength, or marketplace recognition, of the existing TLD, in this case .com.
This factor considers the product at issue and the degree of care likely to be exercised by the purchaser, “with a higher degree of care supporting a lower likelihood of confusion and ‘lower consumer care … increas[ing] the likelihood of confusion.”‘
The relevant class of users here consists of casual Internet users, likely to exercise a low degree of care when exposed to or interacting with TLDs, increasing the likelihood of confusion. For example, users will likely be exposed to new TLDs through television, Internet, and radio advertisements. The low degree of care associated with such casual interactions, combined with high visual and aural similarity, will increase the likelihood of confusion between strings such as .com and .cam.
3. Marketing Channels
“Relevant to the issue of likelihood of confusion is consideration of how and to whom the respective goods of the parties are sold.”
Confusion is more likely when a good is marketed to and used by the same or similar users.
However, even if the parties are currently engaged in different channels of trade, marketing methods can and do change. (“In many cases, a party’s present method of distribution is not given much weight, on the theory that marketing methods are always subject to change in the future.”).
Even if a TLD is currently intended to be a restricted TLD, this can easily change in the future. Indeed, “ICANN recognizes that business models may evolve as the market matures” and will not penalize TLD operators if the applicant’s business plan for the new gTLD were to change from the mission/purpose originally stated in the TLD application.
Therefore, like .com, the .cam string will be a broad-use TLD and generally open to all registrants, leading to overlapping marketing channels. Even though the applicant expresses its current intent to limit the TLD somewhat, marketing methods are always subject to change. It is possible that the current overlap in marketing channels will become even broader in the future. This will significantly increase the likelihood of confusion.
C. Evidence of Likelihood of Confusion — Surveys and Experts
Trademark scholar J. Thomas McCarthy recognizes that “an increasing number of opinions expressly rely upon survey evidence to substantiate the decision” that likelihood of confusion exists. McCarthy, § 32:195. Indeed, “[s]urvey evidence can be helpful in ascertaining the likelihood of confusion for purposes of the trademark laws …. This proposition is also particularly true when a low-cost item is involved.”
The U.S. District Court for the Southern District of New York has explained: “Survey evidence is particularly useful since evidence of actual confusion is quite difficult to find.”
III. Confusing Similarity Between .Cam and .Com
Under the ICANN standards– which reflect and parallel trademark law standards, as set out above– .com and .cam are confusingly similar. The applied-for TLD .cam so nearly resembles the well-established .com TLD in appearance, sound, and meaning that it is likely to deceive or cause confusion in the mind of the average, reasonable Internet user:
• The strings are visually similar because .cam and .com both include just three letters, and each begin with “c” and end with “m”
• The strings are phonetically similar because .cam and .com both include just three letters, each begin with “c” and end with “m,” and the middle vowel can be pronounced by ordinary English speakers in a way that sounds similar
• There is no difference in meanings because .cam possesses no meaning, obvious or otherwise, which would distinguish it from .com
Prior to approving any new gTLD application for further processing, ICANN performed an Initial Evaluation, which involved comparing existing TLDs with every applied-for gTLD string for the purpose of determining whether the new string is confusingly similar to an existing TLD.
The similarity review is conducted by an independent “String Similarity Panel” and is simply a visual similarity check, in part based on an algorithmic score. A similarity score between two TLD strings may be obtained by using ICANN’s String Similarity Assessment Tool.
The closer to 100 means that it is closer visually under the algorithmic scoring process.
The similarity score between .cam and .com is 63%.
This visual score reflects the clear similarity of the two strings. And as discussed above, visual similarity, albeit an important factor, is only one aspect. of the similarity issue. Aural or phonetic similarity and similarity of meaning must also be evaluated.
As set forth in the declaration of James T. Walsh, who bases his opinion on over 30 years of experience in evaluating confusing similarity in trademark and related matters, including as an Administrative Trademark Judge at the Trademark Trial and Appeal Board of the United States Patent & Trademark Office (“USPTO”) and in teaching examiners at the USPTO, the similarity of .cam and .com is material and likely to cause confusion.
It is clear that .cam and .com each include just three letters, and each begin with “c” and end with “m”. This fact results in an important similarity in appearance as well as sound because the one letter difference between the letter strings is virtually imperceptible.
As demonstrated above, the relevant class of users here consists of casual Internet users, likely to exercise a low degree of care when exposed to or interacting with TLDs, increasing the likelihood of confusion resulting from such visual and phonetic similarities.
Another important similarity, the similarity in meaning because .cam possesses no distinguishable meaning, obvious or otherwise, further establishes the confusing similarity of the two TLD strings. There is no stronger TLD in Internet usage than .com. and the .com TLD has become shorthand for business and businesses engaged in commercial activities online. In fact, .com is like a famous mark in the trademark field where the law dictates that newcomers stay far afield from the famous mark.
Consequently, it is probable that the average Internet user, so conditioned to hearing and seeing the .com TLD would mistake .cam with .com or .com with .cam in navigating the Internet
In addition, a survey study designed, supervised, and implemented by Hal Poret — who has personally conducted over 450 consumer surveys concerning consumer perception, opinion, and behavior — found there to be a 39% level of confusion attributable to the similarity between .cam and .com.
This was over and above any “background” confusion, which he screened out using control questions.
In his experience, “a net rate of 39% confusion is high and suggests that it is probable, and not merely possible, that there would be a substantial likelihood of confusion among Internet users who encounter domain names with the .cam TLD.”
Further, as established by the declaration of Gail Stygall, a Professor of English Language and an adjunct professor of Linguistics at the University of Washington, Seattle, WA, who has studied linguistics extensively as well as led seminars and published articles on the English language, the strings .cam and .com are confusingly similar.
The linguistic similarities of the two strings establish that confusion among Internet users will occur if they encounter domain names with the .cam string.
Finally, the commercial strength and popularity of the .com TLD, combined with the potential overlapping marketing channels of .com and the applied-for .cam gTLD are yet more factors that establish the likelihood of confusion.
Therefore, like .com, the .cam string will be a broad-use TLD and generally open to all registrants, leading to overlapping marketing channels.
This will significantly increase the likelihood of confusion. Therefore, both are open TLDs, generally open to all registrants, and Internet users may reasonably mistake .cam for VeriSign’s well-known .com TLD.
In sum, as set forth in the Walsh and Stygall declarations, the important similarities in appearance, sound, and meaning establish the substantial probability of confusion.
IV. Harm to Users and Verisign from Confusion
String confusion involving .cam and .com will result in harm to Internet users as well as Verisign. Due to user confusion, persons looking for a domain registered in the .com TLD may instead find a domain registered in the .cam TLD. In other words, Internet users who suffer confusion will be looking for an address that does not exist. This will result in harm to users who reach an unintended website, or no website at all, due to string confusion.
In addition, if a registrant intends to sign up for a com domain name but is confused because of the existence of .cam, and consequently signs up for a .cam domain name unintentionally, the user will be harmed by not receiving what he or she wanted or expected. While the user will believe it is getting a large TLD, with superior performance, security, stability and services, the user will be getting a start-up TLD without any of these attributes.
Further, Verisign will suffer economic harm when users are diverted away from its registry services.
Not only will Verisign lose revenues as a result of consumers being misled, but Verisign’s brand will also suffer harm from negative customer experiences resulting from string confusion.
Anti-cybersquatting context, a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a site may harm the goodwill represented by the mark. Therefore, harm may result from confusion when users have a negative experience and mistakenly believe .cam is affiliated with, associated with, or endorsed by .com.””