The pool of bidders for the .SHOP new gTLD got a little bigger as the ICDR upheld an objection to the .SHOPPING new gTLD made by an applicant for the .SHOP registry, Commercial Connect, LLC. Commercial Connect’s objection was rooted in Article 2(e)(i) of the Procedure which provides: “(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.”

Thus, the .SHOPPING applicant will now have its application thrown into a pool with the other .SHOP applicants, which includes (as noted on the Commercial Connect website) “9 applicants for .Shop, 2 applicants for .Shopping, and 1 applicant for 通販 (tsuhan – Online Shopping in Japanese).”

The applicant, Sea Tigers, apparently put its best foot forward in trying to argue against a likelihood of confusion even hiring a linguistics professor to submit an expert opinion that .SHOP and .SHOPPING would not “likely” be confused because the likelihood was “merely possible, not probable,” as the two strings look and sound different from each other. The panel however was not buying any of this and discussed the root similarities of the two terms and their overlapping usage in common English parlance as verbs.

It is interesting to consider whether the outcome here might have been different if there had been survey evidence submitted that users were not confused – or would not be confused – by the terms. This type of evidence is typical in trademark cases dealing with the same issue and could provide firmer ground for creating differences between descriptive terms that are similar.

For .SHOPYOURWAY, Commercial Connect was also the objecting party. The applicant is an affiliate of Sears Holding Co. (“Sears”) which uses the trademark SHOPYOURWAY for its customer rewards program which is apparently very popular with Sears customers, and is also a registered U.S. Trademark – Reg. No. 4,368,595. The panel denied the objection, largely based on its interpretation that the term SHOPYOURWAY speaks to an individualized shopping experience that is different than the plain term .SHOP.

Although the panel noted that it was not able to determine the overall fame/notoriety of the term to the average internet user, it seems clear that the fact that the term is already a mark used for a program run by a major corporation with a substantial customer base did not hurt.

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