statement on "confusingly similar" strings

[Robin Gross]

Hi Danny,

A few alternatives have been floated around.  One is that this  
recommendation (#10) should be deleted entirely since it is outside  
of ICANN's technical authority (my first choice).  Next is only  
technical confusion should be avoided, a re-stated version of the  
above view.   Another view is that the type of confusion to be  
prevented should be limited to visual confusion (homoglyphs).  The  
most extreme view is that all kinds of confusion should be prevented,  
including preventing strings with similar meanings.   This extreme  
view is what is currently in the GNSO's recommendations (for all new  
gTLDs including IDNs).   So having a .com and a .biz would be  
prevented because their meanings are confusingly similar.   The same  
goes for a .web and a .net - they prevented by the GNSO's  
recommendation since they have similar meanings.

I was willing to settle for a compromise (middle) view that visual  
confusion would be avoided.   But Chuck Gomes of the Registers  
insists that Council's position on IDNs must be identical to its  
earlier position on new gTLDs, which is also this extreme view of  
preventing any kind of confusion imaginable.

It is possible this issue will come back to the GNSO from the Board  
as it will be sending back our new gTLD recommendations that are  
controversial and un-implementable ("morality", "public order",  
"confusingly similar", the arbitrary objection and rejection processes).

Robin




On Feb 20, 2008, at 4:59 AM, Danny Younger wrote:

> Robin,
>
> You have indicated that you are uncomfortable with the
> proposed wording -- with what wording would you be
> comfortable?
>
> regards,
> Danny
>
> --- Robin Gross <robin at IPJUSTICE.ORG> wrote:
>
>> NCUC:
>>
>> Below is a draft statement on the GNSO's policy
>> recommendation for
>> IDNs: “confusingly similar strings must be avoided.”
>>
>> We need to submit it in the next day or so, so
>> please let me know
>> soon if you have any suggestions for improving it.
>>
>> Thanks,
>> Robin
>>
>>   ----------------
>>
>>
>>
>> Non-Commercial Users Constituency
>>
>>
>>
>> Minority Statement on item 10 of the Executive
>> Summary of the GNSO
>> Comments in Response to the ccNSO-GAC Issues Report
>> on IDN Issues:
>> “Confusingly similar strings must be avoided.”
>>
>>
>>
>> This minority report address the wording of item 10
>> of the Executive
>> Summary of the GNSO Comments in Response to the
>> ccNSO-GAC Issues
>> Report on IDN Issues (the “GNSO Comments”)[1], as it
>> presently states
>> that “confusingly similar strings must be avoided.”
>>
>>
>>
>> This wording was previously used by the GNSO Council
>> at its “Policy
>> recommendations and implementation guidelines for
>> the introduction of
>> new top-level domains”.[2] At the final draft
>> report, Recommendation
>> no. 02 states that: “Strings must not be confusingly
>> similar to an
>> existing top-level domain.” For reference purposes,
>> a footnote
>> relates the “confusingly similar” expression with
>> item 4(a) of the
>> UDRP.[3]
>>
>>
>>
>> We object to the adoption of the misleading wording
>> “confusingly
>> similar” in the GNSO Comments, grounded in the
>> following arguments:
>>
>>
>>
>> 1. Expansion of trademark rights to a broader field
>> of elements
>>
>>
>>
>> In adopting the “confusingly similar” expression, as
>> it is used by
>> item 4(a) of the UDRP, the GNSO Comments expand the
>> trademark logic
>> of protection to a wider range of elements,
>> especially in what
>> concerns with domain names and the way countries can
>> refer to
>> themselves through domain names.
>>
>>
>>
>> In adopting this kind of wording, the GNSO Comments
>> would be equating
>> domain names with trademarks as properties that
>> could be legally
>> protectable. Such expansion of trademark logics to
>> other elements,
>> such as domain names, not only broader the scope of
>> ICANN authority,
>> as addressed bellow, but also is incorrect in legal
>> terms.
>>
>>
>> In her “Legal Briefing Paper on GNSO Recommendations
>> for Domain Name
>> Policy”, American University Law Professor Christine
>> Haight Farley
>> stated that “trademarks are legally protected
>> intellectual property
>> because it is believed that the commercial use of a
>> mark by another
>> that is likely to cause confusion would injure
>> consumers.  Trademarks
>> are legally protectable intellectual property also
>> because their
>> owners have developed valuable goodwill in the
>> marks.  Neither of
>> these conditions of legal protection apply in the
>> case of domain
>> names.”[4]
>>
>> Non-commercial users of domain names will be
>> unfairly discouraged
>> from using trademarks.  Even though a trademark law
>> analysis would
>> permit a broad range of confusingly similar domain
>> names that are
>> used for non-commercial purposes, the GNSO’s
>> recommendation would not.
>>
>> Perhaps a better policy choice might be to look to
>> the private sector
>> and open source software developers to create new
>> software that can
>> better prevent confusion caused by similar words,
>> such as new fonts.
>>
>>
>> 2.  Only technical issues within scope of ICANN
>> authority
>>
>>
>>
>> In maintaining the “confusingly similar” expression
>> at item 10 of its
>> Executive Report, the GNSO Comments do not narrow
>> the scope of ICANN
>> authority to deal with cases related to technical
>> confusion. On the
>> contrary, it empowers ICANN to act in fields that it
>> does not have
>> adequate authority to decide upon, as the adequate
>> ways through which
>> a country or community can designate themselves.
>>
>>
>>
>> As the GNSO Comments address domain names, it is
>> important to
>> highlight that a domain name, by itself, does not
>> cause confusion,
>> but only with relation to how the domain is used. In
>> maintaining the
>> general confusion wording the GNSO Comments surpass
>> the concept of
>> technical stability and seems to end up regulating
>> other fields of
>> expression and consumer protection that are outside
>> ICANN´s authority.
>>
>>
>>
>> 3. “Confusion similarity” and “likelihood of
>> confusion”
>>
>>
>> There is also another issue of concern regarding the
>> definition of
>> what could be considered as “confusingly similar”
>> strings. In her
>> “Legal Briefing Paper on GNSO Recommendations for
>> Domain Name
>> Policy”, Law Professor Christine Haight Farley has
>> addressed this
>> topic, stating that “confusing similarity” and
>> “likelihood of
>> confusion” are two different concepts.[5]
>>
>> As mentioned in her Legal Briefing: “A determination
>> about whether
>> use of a mark by another is “confusingly similar” is
>> simply a first
>> step in the analysis of infringement.  As the
>> committee correctly
>> notes, account will be taken of visual, phonetic and
>> conceptual
>> similarity.  But this determination does not end the
>> analysis.  Delta
>> Dental and Delta Airlines are confusingly similar,
>> but are not likely
>> to cause confusion, and therefore do not infringe.
>> As U.S. trademark
>> law clearly sets out, the standard for infringement
>> is where the use
>> of a mark is such “as to be likely, when used on or
>> in connection
>> with the goods of such other person, to cause
>> confusion, or to cause
>> mistake, or to deceive…”   While it may be that most
>> cases of
>> confusing similarity are likely to cause confusion,
>> because the
>> infringement standard takes account of how the mark
>> is
> === message truncated ===
>
>
>
>        
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IP JUSTICE
Robin Gross, Executive Director
1192 Haight Street, San Francisco, CA  94117  USA
p: +1-415-553-6261    f: +1-415-462-6451
w: http://www.ipjustice.org     e: robin at ipjustice.org



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