International Centre for Dispute Resolution
New gTLD String Confusion Panel

Re: 50 504 000243 13Charleston Road Registry Inc., OBJECTOR
andFoggy Beach, LLC, APPLICANT
String: <.games>

EXPERT DETERMINATION
The parties
The Objector is Charleston Road Registry Inc.(1600 Amphitheatre Parkway Mountain View, CA 94043)and isrepresented by Brian Winterfeldt, Katten Muchin Rosenman LLP(2900 K Street NW,North Tower Suite 200
Washington, DC 20007-5118)- brian.winterfeldt@kattenlaw.com.
The Applicant is Foggy Beach, LLC(10500 NE 8th Street Suite 350 Bellevue, WA 98004)and is represented byJohn M. Genga Esq. and Don Moody of New gTLD Disputes (15260 Ventura Boulevard Suite 1810 Sherman Oaks,
CA 91403)-jgenga@gengalaw.com and don@newgtlddisputes.com.
The New gTLD String Objected To
The new gTLD string applied for and objected to is: <.games>
Prevailing Party
The Objector has prevailed and the Objection is sustained.
The New gTLD String Confusion Process
Module 3 of the ICANN gTLD Applicant Guidebook (the Guidebook) contains Objection Procedures and the New
gTLD Dispute Resolution Procedure ("the Procedure").
Article 1(b) ofthe Procedure states that "The new gTLD program includes a dispute resolution procedure, pursuant
to which disputes between a person or entity who applies for a new gTLD and a person or entity who objects to thatgTLD are resolved in accordance with this New gTLD Dispute Resolution Procedure.
As expressed in the Guidebook, and the Procedure, there are four(4)grounds to object to the registration of newgTLDs. One ofthese grounds expressed String Confusion, as described in the Procedure Article 2(e)(i): "(i)'String
Confusion Objection' refers to the objection that the string comprising the potential gTLD is confusingly
similar to an existing top-level domain or another string applied for in the same round of applications."
Article 3(a) states that "String Confusion Objections shall be administered by the International Centre for Dispute
Resolution"(the ICDR).

Procedural History of this CaseOn June 13, 2012, Charleston Road Register Inc.(the Objector) submitted a detailed new gTLD application to
ICANN for the string .game (Application ID: 1-1138-34539).
Foggy Beach, LLC (the Applicant) filed a new gTLD application for .games (Application ID: 1-1470-40168).
On or about March 13, 2013, the Objector filed a gTLD String Confusion Objection to the gTLD application ofthe
Applicant for .games on the grounds that .games "so nearly resembles .game that it is likely to deceive or cause
confusion in the mind ofthe average reasonable internet user".
On March 18, 2013,the ICDR acknowledged receipt ofthe Objection and conducted an administrative review of the
Objection.
On April 3, 2013, following the administrative review, the ICDR advised the parties that the Objection compliedwith Article 5-8 ofthe Procedure and the applicable Dispute Resolution Provider Rules (the DRSP Rules) and the
Objection was registered for processing.
On April 17, 2013, the Applicant was advised that it shall file a response to the Objection in 30 days from that date.
On June 5, 2013,the Applicant was advised that there was a deficiency in the Response to the Objection.
On June 11, 2013,the parties were advised that the Applicant had remedied the deficiencies noted on June 5, 2013
and that the Response to the Objection complied with Article 11 of the Procedure and applicable DRSP Rules.
On June 17, 2013,I was appointed as the Expert to determine the Objection and the parties were to submit
comments and challenges, if any, to the appointment by June 20, 2013. No comments or challenges to myappointment were received.
Basis for Objector's Standing to Object based on String Confusion
The Objector submitted its new gTLD application for .game on June 13, 2012. It bases its claim to standing on the
Guidebook s. 3.2.2.1 and the Procedure Article 8. Its objection is based on the allegation of string confusion, on thebasis that "the string comprising the potential gTLD is confusingly similar to ... another string applied for in thesame round of application", relying on the Procedure Article 2(i) and that its objection complies with Article 8 (a).
It references the Guidebook s. 3.2.2.1, based on the fact that string confusion was not found in the Initial Evaluation
by ICANN's string similarity review between the gTLD for which it has applied and the applied for gTLD to which
it objects and claims standing on the basis that its .game string was not placed into a string similarity contention with
the Applicant's .games string.
In my view the Objector has standing to object based on the allegation of string confusion.
Factual Background
The Objector, an American company, is a wholly owned subsidiary of Google Inc.(Google), established to provide
registry services to the interne public. The Objector's business is to manage Google's gTLD portfolio and Google's
registry operation business, to provide, inter alia, services and tools for internet users and advertisers of all sizes.
The Applicant is a subsidiary of Donuts Inc., both American corporations. With its parent, the Applicant hasapplied for multiple other TLDs. It claims in its application for .games that, along with other TLDs in the Donuts
Inc. family, it "will provide internet users with opportunities for online identities and expressions that do not alreadyexist".

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Parties' Contentions(a) Objector
The Objector is an Applicant for the .game string in this new gTLD program round. It contends that animpermissible confusion will result if both the .game and .games gTLDs are permitted to come into existence.
The Objection is based on four grounds:
1.
2.
3.
4.

The strings are virtually identical in appearance.
The strings are virtually identical in phonetic sound.
The strings are virtually identical in meaning.
The strings so resemble each other that they are likely to deceive or cause confusion.

The Objector also contends that gTLDs that differ only by the addition of a final "s" will cause recollectiondifficulties for all Internet users because ofthe limits of human recollection, and will cause further difficulties for
non-English speakers. These grounds are supplemented by extensive argument, examples and authorities that I will
discuss in the Discussion and Findings section of this Expert Determination.
(b) Applicant's Response
The Applicant contends that the Objection fails because the burden of proof that the strings are so similar that the
average reasonable internet user would confuse them is not met. Rather, it contends, its applied for string is "readily
distinguishable.
It argues that the Objection seeks to stifle fair competition by its use of the ICANN objection process to obstruct thepath of applicants applying for distinct TLD names by relying on irrelevant materials, hyperbole, conjecture andconclusory assertions.
The Applicant contends that the Objection contravenes the letter and spirit ofthe gTLD Program, goals which
include increased choice and competition in the domain name industry.
The Applicant expands on these contentions under the following headings, which it supports by extensive argument
and evidence:
A. The Objector fails to prove the substantive elements required for its Objection.
1. The Objector does not prove .games and .game are so similar in appearance as to result in a
likelihood of Internet user confusion.
2. Objector's similarity arguments are defeated by the fact that plurals are routinely used andcoexist peacefully in the DNS.
3. Objector does not prove .games and .game are so similar in sound as to result in a likelihoodof internet user confusion.
4. Objector does not prove .games and .game so similar in meaning as to result in a likelihood ofInternet user confusion.
5. The Objection fails to show the high level of similarity needed to succeed.
B. Objector makes arguments irrelevant to the elements in the Guidebook standard.
The Applicant concludes by submitting that "the Objection falls short of its heavy burden to prove "'probable'
confusion among 'average reasonable Internet users' that would undermine confidence in the DNS itself. Objector
offers no evidence supporting its conclusory assertions even though it bears the burden of proof. Rather, most ofthe
Objection raises issues wholly irrelevant to a string confusion determination".
The Applicant argues that in considering whether the burden of proof that rests upon the Objector has been satisfied,
it is relevant that the ICANN Initial Review did not find that there was sufficient similarity between .game and.games to cause probable confusion among Internet users.

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Discussion and Findings(a) The Standard and the Burden of Proof
The issue in this Expert Determination is whether the applied for gTLD string (.games) is likely to result in string
confusion with the Objector's proposed string (.game).
The Guidebook s. 3.5.1 defines String Confusion Objection and the standard to be applied on the Expert
Determination as follows:
A DRSP panel hearing a string confusion objection will consider whether the applied-for gTLD string islikely to result in string confusion. String confusion exists where a string so nearly resembles another that it
is likely to deceive or cause confusion. For a likelihood of confusion to exist, it must be probable, notmerely possible that confusion will arise in the mind of the average, reasonable Internet user. Mereassociation, in the sense that the string brings another string to mind, is insufficient to find a likelihood ofconfusion.
S. 3.5 provides that "the objector bears the burden of proof in each case. Thus, there is a presumption in favour of
granting new gTLDs to applicants who satisfy the requirements.
The Procedure Article 2(e)(i) defines a string confusion objection as "the objection that the string comprising thepotential gTLD (in this case .games) is confusingly similar to ... another string applied for in the same round of
applications"(in this case .game).
Article 20(c) provides that "the Objector bears the burden of proving that its objection should be sustained inaccordance with applicable standards that have been defined by ICANN"(in this case s. 3.5.1 ofthe Guidebook,quoted above).
Thus, the burden of proof is the civil standard of a balance of probabilities. It may be stated as follows: has the
Objector demonstrated that it is more likely than not that there will be string confusion as defined?
(b)(i) The Issue of Visual Similarity
It is obvious that .game and .games are visually similar (according to the Objector nearly identical both visually andorthographically) and thus there is the potential for confusion. The Objector provides as evidence the ICANN String
Similarity Assessment Tool, which assesses the similarity at 78%. This tool is "intended to provide anapproximation of similarity" between two gTLDs.
It is unnecessary in my view to consider the precedents in intellectual property law supplied by the Objector toconclude that there is indeed a visual similarity between the two applied for gTLDs.
The Applicant argues that the addition of one letter to a short word such as "game with that letter located on adifferent row on a typewriter keyboard does not equal visual similarity. I do not find this to be a persuasive
argument.
The more substantive response ofthe Applicant is with reference to the claimed similarity of78% as determined by
the String Similarity Assessment Tool.
The Applicant meets the 78% similarity found by the ICANN assessment tool by referring to other terms which
result in a higher score such as "Google" and "Goggle" and "post-game and "post-fame.
In every such example, the two words are different and none are the plural of the other.
The Applicant notes that the degree of similarity did not result in the ICANN String Similarity Panel concluding in
the initial review that there was sufficient similarity between .game and .games to find probable confusion among
Internet users. The Applicant argues that the Initial Evaluation amounts to an affirmative finding that there was not
sufficient similarity between the two strings to cause probable confusion. This argument requires an analysis of the4Initial Evaluation that is conducted under s. 2.2 of Module 2 of the Guidebook, which I will discuss below, since it isrelated to the visual similarity issue.
(b)(ii) The Initial Evaluation
The Objector relies on the Initial Evaluation as one ofthe bases to found its standing, while the Applicant relies on it
as an affirmative finding in its favour.
The Initial Evaluation is provided for in s. 2.2 of Module 2 of the Guidebook, under the heading "String Review". It
is described as a "first review" focusing on "whether the applied-for gTLD string is so similar to other strings that it
would create a probability of user confusion".
S. 2.2.1.1 describes the Initial Evaluation as a "preliminary comparison of each applied for gTLD string" against,
inter alia, other applied for strings. The objective is "to prevent user confusion and loss of confidence in the DNS
resulting from delegation of many similar strings". The section notes the definition of"similar for purposes ofthe
Guidebook. It adds "[T]he visual similarity check that occurs during Initial Evaluation is intended to augment theobjection and dispute resolution process that addresses all types of similarity".
S. 2.2.1.1.1 describes the String Similarity Panel's task as "to identify visual string similarities that would create aprobability of user confusion".
With respect to applied-for gTLD strings, the task is described as "[A]11 applied-for gTLD strings will be reviewed
against one another to identify any similar strings. In performing this review, the String Similarity Panel will create
contention sets that may be used in later stages of evaluation".
The Review Methodology provided for in s. 2.2.1.2 is important and I quote it in full (footnotes omitted):
The String Similarity Panel is infoi ned in part by an algorithmic score for the visual similarity between
each applied-for string and each of other existing and applied for TLDs and reserved names. The score will
provide one objective measure for consideration by the panel, as part ofthe process of identifying strings
likely to result in user confusion. In general, applicants should expect that a higher visual similarity scoresuggests a higher probability that the application will not pass the String Similarity review. However, it
should be noted that the score is only indicative and that the final determination of similarity is entirely up
to the Panel's judgment.
The algorithm, user guidelines, and additional background information are available to applicants fortesting and informational purposes. Applicants will have the ability to test their strings and obtainalgorithmic results through the application system prior to submission of an application.
The algorithm supports the common characters in Arabic, Chinese, Cyrillic, Devanagari, Greek, Japanese,
Korean, and Latin scripts. It can also compare strings in different scripts to each other.
The panel will also take into account variant characters, as defined in any relevant language table, in its
determinations. For example, strings that are not visually similar but are determined to be variant TLD
strings based on an IDN table would be placed in a contention set. Variant TLD strings that are listed aspart of the application will also be subject to the string similarity analysis.
The panel will examine all the algorithm data and perform its own review of similarities between strings
and whether they rise to the level of string confusion. In cases of strings in scripts not yet supported by thealgorithm, the panel's assessment process is entirely manual.
This portion ofthe section concludes by providing that the panel will use the common standard to test for string
confusion quoted earlier in these reasons.
S. 2.2.1.1.3 deals with Outcomes ofthe String Similarity Review. The relevant portions are:An application for a string that is found too similar to another applied-for gTLD string will be placed in acontention set.
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An application that passes the String Similarity review is still subject to objection by an existing TLD
operator or by another gTLD applicant in the current application round. That process requires that a string
confusion objection be filed by an objector having the standing to make such an objection. Such categoryof 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. Refer to Module 3, Dispute
Resolution Procedures, for more information about the objection process.
It is thus apparent that the Initial Evaluation is primarily a preliminary review, focusing on visual string similarity,
for the purpose of determining whether, as relevant to this case, two applied-for strings should be placed in acontention set. Where, as here, that was not the result of the Initial Evaluation, it is open to an applicant to file astring confusion objection and such an objection is not limited to visual similarity, but rather, confusion based on
any type of similarity, including visual, may be claimed by an objector.
Thus, in my view, that the Initial Evaluation did not find visual string confusion between .game and .games, such as
to result in a contention set, is relevant, but not conclusive with respect to the issue of visual similarity in a string
confusion objection, but otherwise the Initial Evaluation has no other relevance to the resolution ofthe Objection.
(c) The Issue of Phonetic Similarity
The Objector focuses on the phonetic pronunciation as "geym" and "geyms". The Objector notes that both are one
syllable words, with a similar suress pattern, the primary accent being on the initial "gey" portion ofthe phonetic
word. The Objector also relies on jurisprudence in intellectual property law as supporting its position.
It argues that potential users hearing the proposed TLDs in advertising or conversation will not readily distinguishbetween the two and thus will be likely to be confused. The Objector gives examples of likely confusion between
for instance "buyer@video.game" and "seller@video.games" and "board.game" and "board.games".
The Applicant argues that the addition ofthe "s" in .games makes the two sounds "very distinguishable. It notesthat the mere similarity of sounds, for example as in "cite and "sights" or "burrow" and "boroughs" are unlikely to
confuse users. However, in both of those examples, the spelling is so different as to minimize any possible
confusion, and the context in which the words would be used is also different.
In my view, there is a phonetic similarity between .game and .games that has the potential to cause confusion.
(d) The Identity or Meaning and the Addition of the Plural "s"
The Objector relies on the argument that there is no material difference in commercial meaning between .game and.games or the terms"game and "games".
It also bases its position on the vagaries and limits of human recollection and the potential for those for whom
English is a second language, particularly for those in which the plural form is not used in their native language, or,as in French, often not pronounced.
The Applicant notes that singular and plural words commonly exist in different in different IP addresses. Jonathan
Nevett, a founder and executive vice president of Donuts Inc. deposes (paragraph 16) that a review of various public
sources demonstrates the existence of more than 50,000 singular/plural pairs that do not refer to the same Internet
protocol(IP) address, compared to only 1,330 pairs that do refer to the same IP address.
The most pertinent ofthe examples provided by the Applicant of such IP addresses are game.com and games.com;
game.co.uk and games.co.uk; game.co.in and games.co.in, each of which has different registrants as the operator.
The Applicant relies as well on the many singular and plural trademarks in different ownership. Mr. Nevett deposesthat the Applicant's search ofthe United States Patent and Trademark Office(USPTO)disclosed only 2,054 of
351,812 unique word marks that have plural matches. However, none ofthe specific examples cited by the
Applicant resemble "game and "games", the closest being "sport" and "sports".
The Objector relies on intellectual property law jurisprudence relating to the impermissibility of the addition of aplural "s" to a name or description to obtain a competing trademark.

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My view is that intellectual property jurisprudence is of very limited relevance to the issue I am to determine. As
the Applicant points out, string confusion is based solely on similarity, while intellectual property law is much more
complex and uses different criteria in comparisons.
I agree that there is no material difference in the commercial meaning of"games" as opposed to "game", and there is
at least the potential for confusion by Internet users of all types, given that the intended use of.game and .games will
be aimed at a similar market.
The existence ofIP addresses owned by different registrants using "game" and "games is an argument in the
Applicant's favour, but there is no evidence ofthe regime under which this was permitted to occur.
Both parties mention the possibility of"cybersquatting" on similar potential gTLDs by adding an "s" to an existing
TLD to gain an advantage. I agree with the Applicant that given the process presently existing for obtaining new
gTLDs and the cost of entry, this is not a significant consideration.
(e) Other Arguments Advanced by the Applicant
The Applicant argues that the Objector, by this and other objections to strings that use the plural "s", contravenes theletter and spirit ofthe New gTLD Program, which includes increased choice and competition in the domain nameindustry. It refers to the Guidebook Module 1 reference to ICANN's dedication to "preserving the operational
security and stability of the Internet, promoting competition".
The Applicant points to the other possible meanings of the word, for instance as a noun meaning a non-domesticatedanimal or a description of a character trait.
It argues that interfering its ability to use its applied for string will negate its free speech rights, and impede growthand competition, setting a dangerous precedent and will effect a loss of confidence in the DNS.
It refers as well to the coexistence offor instance co. and .com, used separately or together in some countries, and towhat it demonstrates could be, but are not, confusing domains, such as At(Lithuania) and .it or .IT (Italy).
(f) Resolution 2.d of the New gTLD Program Committee
I was referred to Resolution 2.d of ICANN's New gTLD Program Committee(NGPC)approved on June 25, 2013.
This resolution dealt with the issue of"Singular & Plural Versions of the Same String as a TLD". It reads in part:
Whereas, the NGPC met on 11 June 2013 to consider the GAC Beijing advice regarding singular and plural
versions of the same string; andWhereas, after careful consideration ofthe issues, review ofthe comments raised by the community, theprocess documents ofthe expert review panels, and deliberations by the NGPC,the NGPC has determinedthat no changes to the ABG are needed to address potential consumer confusion specifically resulting fromallowing singular and plural versions ofthe same strings;

Resolved (2013.06.25.NG07), the NGPC has determined that no changes are needed to the existingmechanisms in the Applicant Guidebook to address potential consumer confusion resulting from allowing
singular and plural versions of the same string.
The publication ofthe resolution included a discussion ofthe rationale for it. The review was prompted by the
Beijing Communiqué of the Government Advisory Committee(GAC)on April 13, 2013 that asked that the Board of
ICANN, due to potential consumer confusion,"reconsider its decision to allow singular and plural versions of thesame strings". The NGPC met on June 11, 2013 to consider the issue, after seeking input from applicants andconsidering the applicant responses.
It noted that the concerns raised by the applicant community highlight the difficulty ofthe issue and the tension thatexists between minimizing user confusion, while encouraging creativity, expression and competition.

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In its deliberations, the NGPC reviewed a number of factors. These factors included, inter alia, the work ofexpert
review panels, the objectives ofthe string similarity review in the Guidebook, the objective function of the string
similarity algorithm in the Guidebook (s. 2.2.1.1.2), the alternative methods available to applicants, including thestring confusion objection mechanism in the Guidebook, and the standard for assessing string confusion, referred toearlier in these reasons. The NGPC noted that:"... the objective of the string similarity review is to prevent user confusion and loss of confidence in the
DNS resulting from delegation of many similar strings. A full consideration of potential consumer
confusion issues is built into the procedures that have been applied in the analysis ofthe strings. The
adoption of the proposed resolution will assist with continuing to resolve the GAC advice in manner that
permits the greatest number of new gTLD applications to continue to move forward as soon as possible."
In my view, the effect ofthe Resolution is that while the NGPC rejected the call to prevent entirely singular andplural version ofthe same strings, it left open the very issue that arises in this case, that is, whether in a particularcase allowing a plural string would likely cause consumer confusion.
Analysis
The issue for determination is whether the Objector has established on a balance of probabilities that the Application
applied for string is likely to result in string confusion, in the sense that it is likely to deceive or cause confusion in
the mind of the average, reasonable Internet user, keeping always in mind in the analysis that the mere possibility ofconfusion and mere association in the sense that the string brings another to mind is insufficient to satisfy the burden
on the Objector.
The Objector and the Applicant are both highly sophisticated and well-resourced organizations, and have raised
every possible argument and counter argument that could be raised for and against the Objection. Most ofthesearguments have been summarized in the discussion section of this Expert Determination above. I have notattempted in the discussion to provide the full detail of all of the comprehensive submissions put forward, but I havecarefully considered all of them.
It is, in my view, clear that it is at least possible that the existence of gTLDs for both .game and .games will deceiveor cause confusion in the minds ofthe average, reasonable Internet user, given the visual resemblance of the twostrings, their phonetic sounds, their meanings, and the market to which their use is likely to be directed.
The question for me is whether the Objector has established that the similarity of the two strings in the sense
mentioned above will likely deceive or cause confusion in the minds of the average, reasonable Internet user, withthe reservation that merely that one string brings the other to mind is not sufficient to support the likelihood ofconfusion.
I have found that there is visual similarity between the two strings. This finding is tempered by the fact that theInitial Evaluation did not find that similarity sufficient to put both strings into a contention set. When visual
similarity is considered along with the phonetic similarity, the balance tips in favour of confusion.
The proposed new strings .game and .games will likely be directed at the same commercial market i.e. those persons
interested in purchasing a game or games or playing a game or games online. The string .game is unlikely to be
used in connection with the other possible meanings of"game" listed by the Applicant, such as wild animals or
character traits.
As I noted earlier in these reasons, I do not find the reference by either party to examples of patent or trademark
jurisprudence to be of much assistance. The regimes under which they are granted are very different, as are the uses
to which patents or trademarks are put and the criteria used when comparing one application with another or an
existing trademark. In the case of trademarks in particular, there are a myriad of ways that they can be presented
and dressed up, while a gTLD string can only be presented in one way, visually and phonetically.
While the NGPC resolution declined to prohibit singular and plural versions ofthe same string, the Beijing
Communiqué ofthe GAC did highlight the issue, the potential for confusion and the difficulty of the issue of which
this case is a paradigm example.

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In my opinion, in this case the balance tips in favour ofthe Objection when the visual and phonetic similarity is
combined with the consideration ofthe commercial market at which both strings will be aimed, those persons
interested in purchasing or accessing a game or games for fun, competition or chance. For the average, reasonable
Internet user in that market, there will, in my view, be a likelihood of confusion, and not merely a realization of
association between the two strings.
I do not see that so to conclude unduly interferes with the free speech rights ofthe Applicant, or stifles completion in
the DNS. The purpose of the New gTLD String Confusion Process and the Procedure is to prevent confusion ofInternet users in the new expanded regime for domain names, while providing wide scope for the proliferation of
new domain names. While the contest between .game and .games is not an easy one to resolve, I am satisfied that
the Objector has met the burden on it to establish the likelihood of string confusion as defined in the Guidebook and
the Procedure.
Determination
Therefore, the Objector has prevailed and the Objection is sustained.

Septemberff,2013

7'E/..
arl A. Cherniak, Q.C.
Sole Expert Panelist9