statement on "confusingly similar" strings

[Robin Gross]

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 used, some  
cases of confusing similarity will not likely cause confusion.”

(…) “In trademark law, where there is confusing similarity and the  
mark is used on similar goods or services, a likelihood of confusion  
will usually be found.  European trademark law recognizes this point  
perhaps more readily than U.S. trademark law.  As a result, sometimes  
“confusingly similar” is used as shorthand for “likelihood of  
confusion.”  However, these concepts must remain distinct in domain  
name policy where there is no opportunity to consider how the mark is  
being used.  As applied to domain names, the only level of analysis  
is the first level of analysis: confusing similarity.”

For the above reasons, we are unsupportive of the current wording of  
item 10 of the Executive Summary of the GNSO Comments in Response to  
the ccNSO-GAC Issues Report on IDN Issues.  This concern also relates  
to the wording used in GNSO’s new gTLD policy recommendations (ASCI)  
regarding the introduction of new domain names for “confusingly  
similar”.



The terminology “confusingly similar” lends itself to the expansion  
of trademark rights to domain names by commercial uses and  
governments to the disadvantage of non-commercial users.  ICANN  
should refrain from taking on consumer protection type roles (such as  
preventing “confusion” in people) and only regulate issues related to  
the technical coordination of the Domain Name System.


[1] http://gnso.icann.org/drafts/ccnso-gac-issues-report-idn- 
cctlds-31jan08.pdf
[2] http://gnso.icann.org/drafts/pdp-dec05-draft-fr.htm.
[3] http://gnso.icann.org/drafts/pdp-dec05-draft-fr.htm#_ftn15.
[4] http://ipjustice.org/wp/2007/06/06/farley-legal-briefing/.
[5] http://ipjustice.org/wp/2007/06/06/farley-legal-briefing/.



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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