International Centre for Dispute Resolution
New gTLD String Confusion Panel_____________________________________________________________________________
Re: 50 504 00245 13< Neustar, Inc.>, OBJECTOR
and< Charleston Road Registry >, APPLICANT
String: < .gbiz >______________________________________________________________________________
EXPERT DETERMINATION
The parties
The Objector is Neustar, Inc., with principal place of business in Washington, D.C, USA, represented by J.
Beckwith Burr, Esq., Deputy General Counsel of Neustar.
The Applicant is Charleston Road Registry, Inc., a corporation incorporated in the state of Delaware, USA withprincipal place of business in Mountain View, California, USA, represented by Brian J. Winterfeldt, Esq. who
prepared the Response while at the law firm Steptoe & Johnson in Washington, D.C. He is now with the law firm
Katten Muchin Rosenman LLP in Washington, D.C.

The New gTLD String Objected To
The new gTLD string applied for and objected to is: <.gbiz>

Prevailing PartyThe Applicant has prevailed and the Objection is dismissed.

The New gTLD String Confusion Process
Module 3 of the ICANN gTLD Applicant Guidebook contains Objection Procedures and the New gTLD DisputeResolution Procedure (“the Procedure” or “DRP”).
Article 1(b) of the 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.

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As expressed in the Guidebook, and the Procedure, there are four (4) grounds to object to the registration of newgTLDs. One of these grounds expressed String Confusion, as described in DRP Article 2(e)(i): “(i) ‘StringConfusion 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 DisputeResolution”.

Procedural History of this CaseThe Objection was filed online with the ICDR on March 18, 2013
On March 18, 2013 the ICDR sent a letter to the Objector, with copy to the Applicant and/or its representative in thisproceeding, acknowledging receipt of its Objection to the gTLD string which Applicant applied for. On April 4,2013 the ICDR sent a letter to the Objector stating that there were administrative deficiencies in the Complaint interms of its non-compliance with the requirements set forth in Articles 5 – 8 of the New gTLD DRP and the ICDRRules. Specifically, the ICDR requested the Objector to provide, within five days, proof or a statement that copiesof the Objection were sent to the Applicant for the new gTLD being objected to.
In this letter the ICDR invited the Objector to amend the Complaint to satisfy the formal requirements referenced inthe preceding paragraph. In a letter to the Objector dated April 11, 2013 the ICDR verified that the Complaint andthe Amended Complaint have satisfied these requirements. This served as a “Proceed letter”, authorizing thecontinuation of the process following the ICDR’s administrative verification as described above.
In accordance with the New gTLD DRP and the ICDR Rules, the ICDR formally notified the Applicant of theComplaint in a letter dated April 17, 2013 and invited the Applicant to file a Response within 30 days of this letter.
In accordance with the New gTLD DRP and ICDR Rules, Applicant submitted its Response in a timely manner,which was duly acknowledged by the ICDR on May 23, 2013. The ICDR also confirmed in this letter that theResponse complied with provisions of Article 11 of the New gTLD DRP and the ICDR Rules.
The ICDR appointed Paul E. Mason as the Expert Panelist in this matter on July 30, 2013. The Panel finds that it
was properly constituted under Article 13(b)(1) of the New gTLD DRP. The Panel has made a statement ofacceptance and declaration of impartiality and independence as required by Article 13(c) of the New gTLD DRP andArticle 1 of the ICDR Rules.

Basis for Objector’s Standing to Object based on String Confusion
Pursuant to Paragraph 3.2.2.1 of the ICANN Guidebook, two types of entities have standing to object:An existing TLD operator may file a string confusion objection to assert string confusion between an
applied-for gTLD and the TLD that it currently operates.

Any gTLD applicant in this application round may file a string confusion objection to assert string
confusion between an applied-for gTLD and the gTLD for which it has applied, where string confusion
between the two applicants has not already been found in the Initial Evaluation. That is, an applicant does
not have standing to object to another application with which it is already in a contention set as a result of
the Initial Evaluation.

Neustar is the operator for the <.biz> gTLD and therefore has standing to object in this case.

2Factual Background
According to Neustar, the GTLD <.biz>, which has been operated by Neustar since 2001, is a specialty TLD
marketed to online entrepreneurs, small businesses and other self-starters. The focus is on business-to-businessonline use of the domain.
The string <.biz> is powerfully associated with the TLD operated by Neustar, and is strongly associated withbusiness productivity offerings online.
These facts are not disputed by the Applicant.

Parties’ Contentions
Objector
Neustar has presented both policy and legal arguments as follows:- ICANN’s launching of new gTLD programs and policies in 2003, 2008 and 2011 contained a caveatthat new gTLDs should not be confusingly similar to existing gTLDs.
- Rejecting the application on string confusion grounds would not constitute an unreasonable exclusion of
top-level labels, constrain competition or result in unnecessary depletion of available names.
- The proposed use of the applied-for string <.gbiz> is very similar to the manner in which the existinggTLD <.biz> is being marketed and used today. Ie, the two basic words (both denotations and connotations) arepractically identical.
- The ICANN String Similarity Assessment Tool algorithm (“SWORD”) cited by Neustar shows asimilarity coefficient of 70% between the two strings.
- Applicant is a wholly-owned subsidiary of Google. According to Applicant’s gTLD application, the “g”
prefix to <.gbiz> supposedly refers to using this new gTLD only for Google apps related to online business. But
broader users are hinted at in some of the applicant’s documents.
- The two strings are visually similar- Many internet domain name decisions under the UDRP (ICANN’s Uniform Dispute Resolution Policy
which is applicable to domain name registration disputes between domain name registrants and trademark or servicemark holders) have held that variation of just one letter in the domain name does not affect its similarity to a UDRP
complainant’s trademark.
- The reasonable internet user does not associate “all things g” with Google.
- Confusing similarity does not turn on bad faith or fraud, as UDRP domain name cases do.
- The use of the phonetically and visually catchy letter “z” in <.biz> is distinctive and has been associatedwith Neustar’s <.biz> registry in which Neustar has invested, and so deserves protection.
ApplicantCharleston Road Registry (CRR) has asserted that Neustar may have shown some possibility of similarity between<.gbiz> and <.biz>, but has not met its burden of establishing probability, rather than mere possibility, of string
confusion in the mind of the average reasonable internet user. Its principal arguments are as follows:3

- According to the UK Trademark Office at least, the string confusion standard also requires an expectation that thestrings in confusion be under the control of a single trade source, ie that the average reasonable internet user would
mistakenly think that the string <.gbiz> in this case is controlled by the same entity as the <.biz> string.
- According to EU trademark law cited by ICANN, small differences in short strings like <.biz> or <.gbiz> result in
more marked differences in overall commercial impressions than do similar changes in longer strings.
- The ICANN String Similarity Assessment Tool algorithm cited by Neustar at 70% ultimately found that the twostrings were sufficiently dissimilar to allow the <.gbiz> application to go forward. There are also numerous visuallysimilar secondary country-level ccTLDs already coexisting with <.biz> to which Neustar has not objected, such as<.biz.et>, <.biz.iq>, etc.
- Visually, in determining whether two terms sound alike, courts often focus on the first letters or syllables which aredifferent here.
- Commercial strength of <.biz> is irrelevant to the case because “biz” is a generic term which is not eligible fortrademark protection. Any “edgy” or “catchy” characteristics of the phrase are attributable to its origin and history,
rather than to Neustar or the <.biz> gTLD per se.
- By contrast, the prefix letter “g” on the internet is widely associated with specific Google programs such as gmail.
- Reasonable internet users are prudent and check the online marketplace at several sources, and so would not likely
rely on typing in a single URL without double-checking further.

Discussion and Findings
Under Paragraph 3.5 of the ICANN Guidebook - “Dispute Resolution Principles (Standards)”, the Objector bears theburden of proof in each case.
Paragraph 3.5.1 of the ICANN Guidebook provides the applicable standard on which to rule on these cases:“3.5.1. String Confusion Objection
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 islikely to deceive or cause confusion. For a likelihood of confusion to exist, it must be probable, not merely possiblethat confusion will arise in the mind of the average, reasonable internet user. Mere association, in the sense that thestring brings another string to mind, is insufficient to find a likelihood of confusion.”
The quantum of proof necessary to sustain a string confusion objection is therefore established at the level ofprobability, not mere possibility.
A. Identical or Confusingly Similar Strings
First, the Panel must establish the legal and factual standards to determine whether the strings are identical or
confusingly similar to each other.
These are cases of first impression where no bright line yet exists to define precisely which if any particular nationallaw(s) are applicable. Since both parties are from the United States, it would not be inappropriate to consider U.S.
law, particularly trademark law, as a point of legal reference. Since these cases may also have international impact
because the New gTLD Program is worldwide in scope accompanying growth of the internet, it would not beincorrect to also take into consideration applicable laws and standards from other national and regional authorities
cited by the parties.

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The UDRP and U.S. trademark cases can be helpful but not determinative. UDRP cases involve rights of trademark
holders and also contain obligatory elements of bad faith by domain name registrant respondents. None of theseaspects are present in New gTLD String Confusion cases. Trademark law standards do not entirely fit here either,because the Objector’s string <.biz> is generic and hence ineligible for trademark protection.
The legal standards for burden and quantum of proof have been set forth by ICANN in its Applicant Guidebook,
Module 3, Paragraph 3.5 as quoted above.
There is a factual standard involving exactly what is meant by “similarity” found in the ICANN Applicant
Guidebook, Module 2, Paragraph 2.2.1.1.3:“An application that passes the [initial visual] 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 category ofobjection 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…” [emphasis added]
Therefore, it is possible under this provision for a party to launch an objection to a newly-applied for gTLD based on
any of these three types of similarity – visual, aural, or in meaning – between the string applied for by Objector andthe string applied for by Applicant. Having said that, it does not logically follow that any one of these grounds ofsimilarity alone would automatically result in having such an objection granted. For example, “.car” and“.automobile” may have the same meaning in English. An objection to a <.car> string based on similarity of
meaning alone with an <.automobile> string would not show a real probability that confusion between the two terms
would arise in the mind of the average internet user, since these strings look and sound entirely different. It is when
there is a confluence of all three types of similarity (visual, aural, meaning) that it becomes most probable that such
confusion will occur.
Unlike some of the earlier gTLD string confusion cases, this one is more complex even though many of thearguments presented here have also been made in simpler gTLD String Confusion Cases.
The policy arguments cut both ways. There is an ICANN policy not to allow confusingly similar gTLDs to beregistered. But there is also an ICANN policy to encourage such registrations to widen the scope of internet use.
The legal arguments also cover both sides of the fence. Although <.biz> is indeed catchy, it is a generic term andcannot be legally protected as a mark. So trademark related arguments do not fit like a glove. Nor do the UDRP
“typosquatting” cases cited by Neustar, because they turn on protecting legitimate trademarks, which does not apply
to <.biz>. UDRP cases also require a bad faith element which is not present in New gTLD String Confusion cases.
There is also an argument by Applicant that internet users must somehow believe that both strings come from acommon trade source. However this would appear to require a considerable amount of mind-reading.
There are factual arguments on both sides as well – whether <.gbiz> looks or sounds confusingly similar to <.biz>.
This Panel finds that the two strings are not visually or aurally similar to each other.
Other key issues to be considered in this case are:1) Do both strings impart similar meanings? and2) Does the prefix letter “g” meaningfully distinguish the applicant’s string <.gbiz> from the Objector’s string<.biz> ?
On question 1) above, this Panel finds that both strings do indeed convey similar meanings, i.e. use for domainnames and websites relating to online business transactions.
On question 2) above, this Panel finds that the prefix letter “g” may impart the suggestion of Google applications
when used in an online context because addresses such as someone@gmail.com are very well-known. It is a5

factually close question which may in part depend on the kind of average internet user involved. For those browsing
for internet domain names on the web generally, the level of sophistication is probably lower than for those involvedin specific e-business applications which are the subject of both strings in this case. The latter type of internet user
would most likely associate the “g” prefix with a Google application, product or service online. But even theaverage general internet user today could well associate the “g” prefix with Google because of the high level of useof gmail addresses worldwide.
B. Probability, not mere possibility, that confusion will arise in the mind of the average reasonableinternet user
This Panel finds that both strings do impart similar meanings and that for this reason it is possible that some
confusion on the part of internet users could arise with respect to the two strings. However it is also possible that theprefix letter “g” in the string <.gbiz> would impart an air of distinctiveness implying an affiliation with Google.
The Panel must emphasize that the quantum of proof necessary to sustain an objection to a proposed new gTLD is“probable” and not merely “possible” that string confusion will arise in the mind of the average reasonable internetuser. This standard was purposely set at a high level by ICANN in order to encourage the introduction of newgTLDs. Aside from the issue of similarity of meaning between the two strings, the Objector has not met its burdenof proof of probability of visual and/or aural similarity between them.
The Panel finds that although Neustar as Objector has shown a possibility of confusion in the mind of the averagereasonable internet user, such a probability has not been proven.

Determination
For the foregoing reasons, in accordance with Article 21 of the New gTLD Procedure and the ICDR Rules, the Panelorders that the Objection be dismissed.
by: Panelist Paul E. Mason

Date: August 9, 20136