Fwd: RE: [gnso-idn-wg] Comments on notes of 30 Jan

[Mawaki Chango]

--- Mawaki Chango <ki_chango at yahoo.com> wrote:

> Date: Thu, 8 Feb 2007 15:19:47 -0800 (PST)
> From: Mawaki Chango <ki_chango at yahoo.com>
> Subject: RE: [gnso-idn-wg] Comments on notes of 30 Jan
> To: Mike Rodenbaugh <mxr at yahoo-inc.com>, gnso-idn-wg at icann.org
> 
> Mike: Does your exposé about trademark rights mean to confirm that
> what the WG referred to in that para about "ex ante rights" was
> trademark, and maybe intellectual property, rights? And this in the
> context of cross-script and IDN gTLD?
> 
> 
> Let's not forget that we are eventually to recommend a policy to
> ICANN, and it is necessary to keep in mind the scope of ICANN's
> mission. It appears to me that this position would lead ICANN in a
> situation of adopting a kind of hard regime regulatory role, while
> I'm not even sure that there is an ICANN executive who publicly
> just
> admits that the organization has any regulatory role!
> 
> The notion of "confusingly similar" may have a good career in the
> US
> courtrooms but is it so, universally? Do we have one global law
> addressing IPR and trademark issues in the same manner? Is ICANN's
> global governance intended to exclusively apply US norms globally?
> Is
>  even UDRP, for example, a globally accepted mechanism for
> addressing
> litigations in the TLD (I clearly mean at the top level) or only
> from
> second and lower levels so far?
> 
> Let me follow up on your example with "yahoo" (I'm Ok taking that
> name because it's not (yet) a TLD name, and it sounds... nice!) We
> seem to be saying that Yahoo!, Inc. is proprietary of the sound
> that
> one makes while pronouncing that corporation's name, as long as
> Internet and trade/business are concerned. So that if it turns out
> that in a totally different linguistic universe, there is a word
> written in their own different script but making the same sound as
> "yahoo" when pronounced, that language community should be
> prohibited
> from ever using that word of theirs to identify themselves on the
> Internet, especially in the DNS.
> 
> Let ne first say that I'm not trying to contempt trademark
> interests
> (though some may be surprised about this, but really, am not!) I
> just
> think, sincerely, that it is a bold and wrong step to make ICANN
> endorse such a policy _a priori_. I don't think it has that
> authority, and think where broader interpretations/perceptions of
> "confusingly similar" beyond "typographically similar" might be
> involved, it is better to let it assess IDN gTLD applications on
> case
> by case basis. There might be very legitimate reasons for people to
> use a specific world in their language and script, which just
> happens
> accidentally to sound like another brandname in ASCII, they should
> be
> given the possibility to make their point (by applying for it,) and
> ICANN to assess the actual issues related to such situation in
> order,
> if possible, to find a fair and satisfactory ground to both parties
> and take ultimate decision, or refer the case to the competent
> jurisdictional and legal authorities if necessary.
> 
> In fact, I figure that in most situations such scenario might not
> even be a threat to the ascii-based trademark holders. Because the
> natives of the hypothetical language where there would be a word
> sounding like "yahoo" would in fact hear such world and perceive
> its
> meaning in their own language first, before they can possibly
> think,
> "Yahoo!, Inc." has a name that sounds like that word (in their
> language,) not the other way around. As to those for whom that
> language is not natural, an IDN gTLD will just be a string of
> characters rather than a sound and a meaning they can relate to.
> 
> My dear friends from the Business constituency got me convinced
> with
> the new gTLDs PDP discussion that we need to support competition
> even
> at the top level, and I have to say I'm a bit surprised that that
> position doesn't seem to hold any longer when it comes to IDN -
> even
> if that necessitates inventing phonetical and semantical rights
> (from
> one language or script) across all languages and scripts.
> 
> The bottom line is, making a policy that would potentially and
> automatically prohibit from the DNS the use of some words by people
> in their own language, for the sake of avoiding all forms of
> proximity/similarity with brand that already exists is a
> heavy-handed
> policy to put in ICANN's hands. While, if we keep this clearer and
> light-handed (at the minimum understandable and acceptable by all)
> by
> sticking to "typographic similarity," every party will still have
> the
> possibility to make a claim and seek a fair decision should a real
> threat occur, if at all.
> 
> 
> Best,
> 
> Mawaki 
> 
> 
> 
> --- Mike Rodenbaugh <mxr at yahoo-inc.com> wrote:
> 
> > There is no question, legally speaking, that trademark rights do
> > give
> > rights to domain strings.  The ICANN community seems to have
> > reached
> > consensus as to that reality long ago, via adoption of sunrise
> > provisions as to strings that are identical to trademarks. 
> > Regardless,
> > UDRP and court decisions have held that passive registration of a
> > domain, preventing use by the trademark owner, can amount to bad
> > faith
> > registration and trademark infringement.  
> > 
> > Furthermore, trademark owners can preclude the use of
> non-identical
> > strings when such use is likely to confuse consumers.  Thousands
> of
> > UDRP
> > decisions have found bad faith as to strings not identical to the
> > trademark in question.  
> > 
> > Typographical vs. Visual Confusion:
> > 
> > It is only the end user perception that is relevant to the
> > trademark
> > analysis, not the underlying punycode rendering.  Yet, again
> there
> > is no
> > question that trademark rights not only trump use of marks that
> > "appear"
> > confusingly similar to the trademark, but also marks that "sound"
> > confusingly similar (Yahoo!, Yahu, Yahoux, Yawho) and marks that
> > have
> > the same "meaning" (Yahoo! Mail and Yahoo! Correo (Spanish) are
> > legally
> > equivalent for purposes of TM analysis).  
> > 
> > I appreciate Mawaki forwarding the string about 'typographical'
> > similarity and think that can be a useful distinction as opposed
> to
> > overall 'confusing similarity' which must also include the other
> > two
> > types.  I agree with Avri and others that it may be harder for a
> > registry to make discretionary decisions about phonetic
> similarity
> > and
> > equivalence of 'meaning' than about typo similarity.  
> > 
> > However, businesses are concerned about all confusing
> similarities
> > with
> > respect to their trademarks, since the law protects against all
> > confusing similarity in order to protect consumers.  And the
> > registry is
> > profiting from trademark infringement in any case of confusing
> > similarity.  Therefore our policy work ought to consider all
> types,
> > but
> > I think these issues may be better left to the new WG formed to
> > address
> > IP protections in new TLDs.
> > 
> > Mike Rodenbaugh
> > Sr. Legal Director
> > Yahoo! Inc.
> > 
> > -----Original Message-----
> > From: owner-gnso-idn-wg at icann.org
> > [mailto:owner-gnso-idn-wg at icann.org]
> > On Behalf Of Avri Doria
> > Sent: Tuesday, February 06, 2007 1:18 PM
> > To: gnso-idn-wg at icann.org
> > Subject: [gnso-idn-wg] Comments on notes of 30 Jan
> > 
> > 
> > 
> > hi,
> > 
> > Re:
> > 
> > >  5.2 Support for a country's rights to define strings for the  
> > > country name. Alternative view; to also accept a country's  
> > > responsibility/right to approve any gTLD strings featuring its 
> 
> > > particular script, if unique for that country. Alternative
> view;
> > to  
> > > also acknowledge a country's right to influence the
> definitions/ 
> > > tables of its scripts/languages. Alternative view; to require a
>  
> > > country's support for a gTLD string in "its" script, in analogy
>  
> > > with the issue of geo-political names. Ancillary view:
> > recognition  
> > > that countries' rights are limited to their respective
> > jurisdictions.
> > 
> > 
> > I am pretty sure I expressed the view that no such right existed
> > and  
> > that ICANN defining any such right was inappropriate.
> > 
> > a.
> > 
> > 
> > 
> > 
> > 
> 
> 
> 
>