statement on "confusingly similar" strings

[Danny Younger]

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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