are confusing similar gTLDs not confusing if the same registry has them all?

[Avri Doria]

Hi,

And consumer protection crew - everyone keeps claiming they do this or that to protect the consumer.  To what extent is it true in this case?  

a.



On 17 Apr 2010, at 17:47, Milton L Mueller wrote:

> I'm at the ARIN meeting and wont be much help for the next 4 days. 
> Even though this issue really agitates me I suspect the TM law crew would be more helpful anyway (Wendy, KK, Robin)
> --MM
> 
>> -----Original Message-----
>> From: Non-Commercial User Constituency [mailto:NCUC-
>> DISCUSS at LISTSERV.SYR.EDU] On Behalf Of Avri Doria
>> Sent: Saturday, April 17, 2010 11:07 AM
>> To: NCUC-DISCUSS at LISTSERV.SYR.EDU
>> Subject: Re: [NCUC-DISCUSS] are confusing similar gTLDs not confusing if
>> the same registry has them all?
>> 
>> Hi,
>> 
>> Thanks.
>> 
>> What I do not have yet is written chapter and verse to quote for the
>> arguments.  It will take me time to get that all sorted and i can use
>> help in doing so.
>> 
>> It might be good to start developing a well formed and well documented
>> NCSG position on this issue.
>> 
>> a.
>> 
>> 
>> On 17 Apr 2010, at 09:37, Milton L Mueller wrote:
>> 
>>> I don't think your reply is so weak, especially when it quotes the
>> DAG3 section 3.4.1.
>>> Really what he seems to be arguing is that an incumbent TLD operator
>> can control the "meaning" of a TLD, not just string confusion.
>>> When Chuck quotes trademark treaties you might remind him that
>> trademark law applies to a wide variety of identifiers, not just domain
>> names, and that TLDs have no colors, are rarely "pronounced" as words or
>> normal names are pronounced - so a lot of the TM confusing similarity
>> stuff just doesn't apply.
>>> 
>>>> -----Original Message-----
>>>> From: Non-Commercial User Constituency [mailto:NCUC-
>>>> DISCUSS at LISTSERV.SYR.EDU] On Behalf Of Avri Doria
>>>> Sent: Friday, April 16, 2010 10:27 PM
>>>> To: NCUC-DISCUSS at LISTSERV.SYR.EDU
>>>> Subject: Re: [NCUC-DISCUSS] are confusing similar gTLDs not confusing
>> if
>>>> the same registry has them all?
>>>> 
>>>> Hi,
>>>> 
>>>>>> Or is that battle already lost?
>>>>> 
>>>>> I do not believe it is lost.  The DAG from m reading still upholds
>> the
>>>> visual criteria for confusing similarity.
>>>>> 
>>>>> It is just that Chuck and others repeat that it includes meaning so
>>>> often and so absolutley that it is gaining currency and while I don't
>>>> find it in my reading of DAGv3, they claim it is a viable option for
>>>> objection by a current string holder.
>>>> 
>>>> But Chuck is going to fight tooth and nail for the position.
>>>> 
>>>> The following is his argument.  i will be working on a response in
>> the
>>>> next days although i already sent a preliminary response which i will
>>>> append after his message.
>>>> 
>>>> 
>>>>> 
>>>>> Let me first start with your minority statement that accompanied the
>>>>> final GNSS Report:
>>>>> http://gnso.icann.org/issues/new-gtlds/pdp-dec05-fr-parta-
>>>> 08aug07.htm#_T
>>>>> oc48210874.  If you believed that the GNSO report defined confusing
>>>>> similarity as visual only and that that was a position of the GNSO
>>>>> Council, then it would not have been necessary for you to express
>> the
>>>>> following reservations about that recommendation:
>>>>> 
>>>>> "In the first instance I believe that this is essentially a
>> technical
>>>>> issue that should have been resolved with reference to typography,
>>>>> homologues, orthographic neighbourhood, transliteration and other
>>>>> technically defined attributes of a name that would make it
>>>>> unacceptable. There is a large body of scientific and technical
>>>>> knowledge and description in this field that we could have drawn
>> on."
>>>>> 
>>>>> "By using terms that rely on the legal language of trademark law, I
>>>>> believe we have created an implicit redundancy between
>> recommendations
>>>> 2
>>>>> and 3. I.e., I believe both 2 and 3 can be used to protect
>> trademarks
>>>>> and other intellectual property rights, and while 3 has specific
>>>>> limitations, 2 remains open to full and varied interpretation."
>>>>> 
>>>>> "As we begin to consider IDNs, I am concerned that the
>> interpretations
>>>>> of confusingly similar may be used to eliminate many potential TLDs
>>>>> based on translation. That is, when a translation may have the same
>> or
>>>>> similar meaning to an existing TLD, that the new name may be
>>>> eliminated
>>>>> because it is considered confusing to users who know both."
>>>>> 
>>>>> Now let me focus on the language in the final report.  Please see
>> the
>>>>> Recommendation 2 Discussion in the report, the first item under the
>>>>> subtitle "TERM OF REFERENCE -- SELECTION CRITERIA".  I first call
>> your
>>>>> attention to the first item: "i) This recommendation has support
>> from
>>>>> all the GNSO Constituencies. Ms Doria accepted the recommendation
>> with
>>>>> the concern expressed below[39]."  As you know, your concerns are
>> the
>>>>> ones pasted above.
>>>>> 
>>>>> Item iii confirms that the issue discussion that ". . . the issues
>>>> found
>>>>> below have been discussed at length, both within the Committee and
>>>>> amongst the Implementation Team."  The discussion goes on in item iv
>>>> to
>>>>> say, "The Committee used a wide variety of existing law[42],
>>>>> international treaty agreements and covenants to arrive at a common
>>>>> understanding that strings should not be confusingly similar either
>> to
>>>>> existing top-level domains like .com and .net or to existing
>>>>> trademarks[43]."  I won't quote all of them here because there are a
>>>> lot
>>>>> of them but let me quote a few that are particularly relevant to our
>>>>> discussion now.
>>>>> 
>>>>> Item vii says, ". . .  the 1883 Paris Convention on the Protection
>> of
>>>>> Industrial Property[48]. It describes the notion of confusion and
>>>>> describes creating confusion as "to create confusion by any means
>>>>> whatever"".
>>>>> 
>>>>> Item x says, ". . . the European Union Trade Mark Office provides
>>>>> guidance on how to interpret confusion. "...confusion may be visual,
>>>>> phonetic or conceptual. A mere aural similarity may create a
>>>> likelihood
>>>>> of confusion."
>>>>> 
>>>>> Item xi says, ". . . Likelihood of association is not an alternative
>>>> to
>>>>> likelihood of confusion, "but serves to define its scope". Mere
>>>>> association, in the sense that the later mark brings the earlier
>> mark
>>>> to
>>>>> mind is insufficient to find a likelihood of confusion, unless the
>>>>> average consumer, in bringing the earlier mark to mind, is led to
>>>> expect
>>>>> the goods or services of both marks to be under the control of one
>>>>> single trade source. "The risk that the public might believe that
>> the
>>>>> goods/services in question come from the same undertaking or, as the
>>>>> case may be, from economically-linked undertakings, constitutes a
>>>>> likelihood of confusion...". (found at
>>>>> http://www.patent.gov.uk/tm/t-decisionmaking/t-law/t-law-
>> manual.htm)"
>>>>> 
>>>>> There is of course much more in this discussion than I quoted above
>>>> but
>>>>> I don't there is anything that says that visual similarity is the
>> only
>>>>> area of possible confusion.  If you can find anything in the report
>>>> that
>>>>> says that, please point it out.
>>>>> 
>>>>> As you know, the ICANN Staff implementation team attempted in their
>>>>> early steps to limit confusing similarity to visual similarity only
>>>> and
>>>>> I challenged them on that several times, pointing them to the
>>>> discussion
>>>>> section mentioned above. Consequently, in DAG3 we find the
>> following:
>>>>> "The visual similarity check that occurs during Initial Evaluation
>> is
>>>>> intended to augment the objection and dispute resolution process
>> (see
>>>>> Module 3, Dispute Resolution Procedures) that addresses all types of
>>>>> similarity. (From DAG3 section 2.1.1.1)"  The standards for a string
>>>>> confusion dispute are found in DAG3 section 3.4.1: "A DRSP panel
>>>> hearing
>>>>> a string confusion objection will consider whether the applied-for
>>>> gTLD
>>>>> string is likely to result in string confusion. String confusion
>>>> exists
>>>>> where a string so nearly resembles another that it is likely to
>>>> deceive
>>>>> or cause confusion. For a likelihood of confusion to exist, it must
>> be
>>>>> probable, not merely possible that confusion will arise in the mind
>> of
>>>>> the average, reasonable Internet user. Mere association, in the
>> sense
>>>>> that the string brings another string to mind, is insufficient to
>> find
>>>> a
>>>>> likelihood of confusion."  Note there is no restriction to visual
>>>>> similarity only.
>>>> 
>>>> 
>>>> my weak response:
>>>> 
>>>> ---
>>>> 
>>>> It is late and I will write in detail with chapter verse and
>>>> interpretation later.  You will possibly be surprised that i use many
>> of
>>>> the same lines you have quoted to make my point.
>>>> 
>>>> A few quick points now
>>>> 
>>>> - As i said the fact that i expressed a concern that something might
>>>> happen is not an acknowledgment  that this thing has been permitted.
>> I
>>>> was predicting the possibility of discussions such as we are having.
>>>> 
>>>> - Yes, we discussed many contributions to the point we reached. But
>> none
>>>> of those discussions firmly established a single standard beyond
>> visual.
>>>> The fact that the background material from the EU includes conceptual
>>>> does not mean that this was accepted as part of the standard by the
>>>> council.  Though of course it might be relevant in a court case, I
>> don't
>>>> know.
>>>> 
>>>> - I do agree that the staff has fuzzed up the borders a wee bit on
>>>> confusing similarity and yes the DAGv3 does define it a way that
>> allows
>>>> confusion and that if it stays this way it will eventually  be a
>> court
>>>> that decides what it really means.  DAGv1 was much better in this
>>>> respect.
>>>> 
>>>> - you quoted
>>>> 
>>>> DAG3 section 3.4.1: "A DRSP panel hearing
>>>> a string confusion objection will consider whether the applied-for
>> gTLD
>>>> string is likely to result in string confusion. String confusion
>> exists
>>>> where a string so nearly resembles another that it is likely to
>> deceive
>>>> or cause confusion. For a likelihood of confusion to exist, it must
>> be
>>>> probable, not merely possible that confusion will arise in the mind
>> of
>>>> the average, reasonable Internet user. Mere association, in the sense
>>>> that the string brings another string to mind, is insufficient to
>> find a
>>>> likelihood of confusion."
>>>> 
>>>> This talks about 'resemblance' which is a term that specifically
>> refers
>>>> to how things look.
>>>> 'Mere association' on the other hand is the best one ever get out of
>>>> translation.
>>>> 
>>>> What this has done, is made the issue of transliteration more
>> difficult
>>>> to argue and this because establishing whether the average Internet
>> user
>>>> is one who can look at hebrew letters and ascii letter and visually
>> see
>>>> the same thing could be a little challenging.  One would also have to
>> be
>>>> able to prove that there was an exception in the transliteration.
>>>> 
>>>> More later.
>>>> 
>>>> ----
>>> 
>