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ICANN wins .hotels/.hoteis confusion appeal but has to pay up anyway

Kevin Murphy, March 5, 2015, 10:45:07 (UTC), Domain Policy

The proposed new gTLDs .hotels and .hoteis are too confusingly similar to coexist on the internet.
That’s the result of an Independent Review Process decision this week, which denied .hotels applicant Booking.com’s demand to have ICANN’s string confusion decision overturned.
But the IRP panel, while handing ICANN a decisive victory, characterized the string confusion and IRP processes as flawed and said ICANN should have to pay half of the panel’s $163,000 costs.
Booking.com filed the IRP a year ago, after the new gTLD program’s String Similarity Panel said in February 2013 that .hotels was too similar to rival Despegar Online’s proposed .hoteis.
.hoteis is the Portuguese translation of .hotels. Neither string was contested, so both would have been delegated to the DNS root had it not been for the confusion decision.
In my view, the String Similarity Panel’s decision was pretty sound.
With an upper-case i, .hoteIs is virtually indistinguishable from .hotels in browsers’ default sans-serif fonts, potentially increasing the ease of phishing attacks.
But Booking.com, eager to avoid a potentially costly auction, disagrees with me and, after spending a year exhausting its other avenues of appeal, filed an IRP in March 2013.
The IRP decision was handed down on Tuesday, denying Booking.com’s appeal.
The company had appealed based not on the merits of the SSP decision, but on whether the ICANN board of directors had acted outside of its bylaws in establishing an “arbitrary” and opaque SSP process.
That’s because the IRP process as established in the ICANN bylaws does not allow appellants to changed a decision on the merits. IRP panels are limited to:

comparing contested actions of the Board to the Articles of Incorporation and Bylaws, and with declaring whether the Board has acted consistently with the provisions of those Articles of Incorporation and Bylaws.

The IRP panel agreed that the SSP process could have been fairer and more transparent, by perhaps allowing applicants to submit evidence to the panel and appeal its decisions, saying:

There is no question but that that process lacks certain elements of transparency and certain practices that are widely associated with requirements of fairness.

But the IRP panel said Booking.com was unable to show that the ICANN board acted outside of its bylaws, highlighting the limits of the IRP as an appeals process:

In launching this IRP, Booking.com no doubt realized that it faced an uphill battle. The very limited nature of the IRP proceedings is such that any IRP applicant will face significant obstacles in establishing that the ICANN Board acted inconsistently with ICANN’s Articles of Incorporation or Bylaws. In fact, Booking.com acknowledges those obstacles, albeit inconsistently and at times indirectly.
…
Booking.com has failed to overcome the very obstacles it recognizes exist.

The IRP panel quoted members of ICANN’s New gTLD Program Committee extensively, highlighting comments which questioned the fairness of the SSP process.
In contrast to usual practice, where the losing party in an IRP bears the costs of the case, this panel said the $163,000 costs and $4,600 filing fee should be split equally between ICANN and Booking.com:

we can — and we do — acknowledge certain legitimate concerns regarding the string similarity review process raised by Booking.com, discussed above, which are evidently shared by a number of prominent and experienced ICANN NGPC members.
…
In view of the circumstances, each party shall bear one-half of the costs of the IRP provider

Booking.com and Despegar will now have to fight it out for their chosen strings at auction.
The full decision can be read in PDF format here. Other documents in the case can be found here.
The TL;DR version: ICANN wins because it has stacked the appeals deck in its favor and the IRP process is pretty much useless, so we’re going to make them pay up for being dicks.

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Comments (5)

  1. Rubens Kuhl says:
    March 5, 2015 at 11:37 am

    The only other contention set created by SSP, .unicom x .unicorn, was settled recently with .unicorn withdrawing and China Unicom prevailing.

    Reply
  2. Volker Greimann says:
    March 5, 2015 at 1:42 pm

    As someone said at public forum (from my recollection):
    One is a large company with millions of customers, and one is a horse with wings…

    Reply
    • Rubens Kuhl says:
      March 5, 2015 at 8:31 pm

      TAO HUANG: Yeah, I’m just doing that. I’m standing here on behalf of Chinese
      Unicom. For anybody that might not know, Chinese Unicom are one of
      the largest operators in the world, and we have over 300 million
      subscribers of telecommunications services. And we have over 200
      million Internet users. I’m standing here because our application of dot
      unicom had been announced by ICANN to enter into the contention set
      with dot unicorn with string similarity, and we do think that is
      inappropriate. First, the objective standards that were used by the
      panel is — in determining string similarity has never been published.
      You know, this concerns was echoed by the GAC during session with the
      board this week. There has been no rational posit nor explanation
      where there was such a substantial delay. The only formula that was
      posited was the SWORD algorithm and no one can explain exactly how
      that works and why that algorithm have been continually tricked even
      after the results of the panel was published. The fact that what most
      people considered was similar plurals and singular were not found to be
      similar. Yet Unicom, a well-known trademark of Chinese company, was
      found to be similar to unicorn, which is kind of a horse.
      [ Laughter ]
      The conclusion of putting us into a string contention is unfair. Dot
      unicom and dot unicorn not only have different appearances but have
      completely different meanings.
      [ Laughter ]
      Both TLDs have completely different (indiscernible) communities and
      there is no possibility of —
      [ Buzzer sounds ]
      (Cheers and Applause).

      Reply
    • Rubens Kuhl says:
      March 5, 2015 at 8:32 pm

      TAO HUANG: Okay, so thank you for the second chance. I’m going to finish my
      speech. So with respect to the algorithm there are other strings that
      have higher scores than dot Unicom and dot unicorn, like dot CEO and
      dot ECO which were not found in the similarity contention set but we
      did. Finally both dot Unicom and dot unicorn each coexist as
      trademarks in the EEO

      Reply
    • Rubens Kuhl says:
      March 5, 2015 at 8:34 pm

      TAO HUANG: Okay, this is Tao Huang from China Unicom again. I want to say thank
      you in case I reach my limit.
      So I’m going to keep on our arguments there for dot unicom and dot
      unicorn. We each coexist as trademarks in the EU. The fact these
      marks allow to coexist by trademark regulator in the EU demonstrates
      that they do not believe there is similarity.
      And, to conclude, we strongly urge ICANN to take these into
      consideration, revisit the panel’s decision, and remove us from the
      contention set.

      Reply

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