draft of my note to the IDNG DT on confusing simlarity

[Avri Doria]

Hi,

I have written up my rebuttal to the argument being made about confusing similarity.  since I have put the topic on today's meeting, i figured i would float a draft by the group.  As I state this is my opinion, but I hope it is consistent with something the NCSG can be comfortable with.  I need to send it in tonight but welcome comments.  As I also say, I think that the NCSG should develop a real position paper on this that can stand the test of time.  We have a lot of work that was done along the years  and I think much of the work needed for that paper would be a tasks of compilation.  

But any case here is a draft of my note.  I am sure it is still full of typos etc, but i will be reviewing it some more before i send it.


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I am afraid this is much longer then my normal email, and I apologize for that but I have to deal with several issues in this response.  Also I want to note that this is my own opinion and not the opinion of the NCSG.  I am submitting this to the NCSG as well as to this DT and am in the process of kicking off a work effort in the NCSG for us to further consider the issue and create a position paper on the subject.  Given the expertise in the NCSG on Trademark Law, Consumer Protection and Human rights including Freedom of Expression, I am sure that whatever gets produced will be far more comprehensive then what I am submitting to this group.  

In this contribution, I need to present my argument on the primacy of the visual aspect in issues in confusing similarity or likelihood to confuse that needs to be resolved by the application process. And I need to account for the other possible aspects related to confusing similarity and  likelihood to confuse that need to be resolved by the application process.  Finally I need to (re-)present my views on how I think these should be handled.


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To be specific, the GNSO recommendation only mentions possible criteria by which a name can be considered confusing similar or likely to cause confusion but does not build a definitive list if those characteristics.  

So Chuck is correct when he claims that there is no specific endorsement of visual similarity as the only method to be used, and I believe I am correct in stating that there is no specific endorsement of the use of translation as the basis for  confusing similarity or likelihood to confuse.

There is mention: that 'confusion may be visual, phonetic or conceptual' as well as many other mentions in the discussions of how various International statutes consider the issue.  And within those discussions different causes of confusion get different treatment.  

My argument is based on the differing treatment that the various possible causes of confusion receive in the examples of confusing similarity and likelihood to confuse.

1. Visually confusing serves as a base component of confusingly similarity in all discussions.  Whatever other views they may have about confusingly similarity all of the referenced documents accept that visual confusion is a reason for something to be designated as confusingly similar to some other string (though of course there are discussions about what it means to be visually confusing - a difficult topic in its own right.)  Among the Trademark document as I understand it, there is no argument against visually confusing, but there are many qualifications in trademark law as it applies to a wide variety of identifiers, not just domain names, for example that TLDs have no colors, are rarely "pronounced" as words or normal names are pronounced - so a lot of the TM confusing similarity stuff may not apply - but that is review panels and court to decide - not this DT.

I believe that it is only visual confusion of the character patterns that is accepted as a reason for likelihood of confusion in all discussions.   

Does anyone argue that visual aspects should not be considered when determining whether a string is confusingly similar?  I think mostly not, and the fact that everyone accepts visual confusion (at least to some degree) as a reason for confusing similarity and the likelihood of confusion,  gives it a special status as the one thing we all agree on - we need to be concerned about those strings that are visually confusing.

I believe this give the visual aspect a primacy, and though this does not mean that they are the only considerations that need to be considered in the process it does mean that they are reasonably the only aspects that need to be considered for all new gTLD in the initial evaluation.

2. No other of type of confusingly similarity is is agreed upon by everyone.  Various are mentioned as things that have been considered and may considered again.  But none of these has the status of being agreed to by all of the International Legal Instruments or to bee discussed in the same way.

E.g.

> For example, the Committee considered the World Trade Organisation's TRIPS agreement, in particular Article 16 which discusses the rights which are conferred to a trademark owner.[44] In particular, the Committee agreed upon an expectation that strings must avoid increasing opportunities for entities or individuals, who operate in bad faith and who wish to defraud consumers. The Committee also considered the Universal Declaration of Human Rights[45] and the International Covenant on Civil and Political Rights which address the "freedom of expression" element of the Committee's deliberations.

> 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" {Article 10bis (3) (1} and, further, being "liable to mislead the public" {Article 10bis (3) (3)}. The treatment of confusingly similar is also contained in European Union law (currently covering twenty-seven countries) and is structured as follows. "...because of its identity with or similarity to...there exists a likelihood of confusion on the part of the public...; the likelihood of confusion includes the likelihood of association..."

> Australian Trade Marks Act 1995 Section 10 says that "...For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion"

> For example, 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. A mere visual similarity may create a likelihood of confusion. Confusion is based on the fact that the relevant public does not tend to analyse a word in detail but pays more attention to the distinctive and dominant components. Similarities are more significant than dissimilarities. The visual comparison is based on an analysis of the number and sequence of the letters, the number of words and the structure of the signs. Further particularities may be of relevance, such as the existence of special letters or accents that may be perceived as an indication of a specific language. For words, the visual comparison coincides with the phonetic comparison unless in the relevant language the word is not pronounced as it is written. It should be assumed that the relevant public is either unfamiliar with that foreign language, or even if it understands the meaning in that foreign language, will still tend to pronounce it in accordance with the phonetic rules of their native language. The length of a name may influence the effect of differences. The shorter a name, the more easily the public is able to perceive all its single elements. Thus, small differences may frequently lead in short words to a different overall impression. In contrast, the public is less aware of differences between long names. The overall phonetic impression is particularly influenced by the number and sequence of syllables."

That is, may different ways of looking at it and considering the issue in an international context, including issues of good or bad faith, freedom of expression, resemblance, visual, phonetic of conceptual.  but at no time did the GNSO council make a definitive list - it referred the problem to the objection reviewers

Finally in this discussion there has been a presumption that I was the only one who felt tension about the definitions.  This is most definitely not the case as expressed in the following.  The reason all of this was left ambiguous is because of this tension.

> xvii) There is tension between those on the Committee who are concerned about the protection of existing TLD strings and those concerned with the protection of trademark and other rights as compared to those who wish, as far as possible, to preserve freedom of expression and creativity. The Implementation Plan sets out a series of tests to apply the recommendation during the application evaluation process.


3. The Question then becomes how did the GNSO Council propose dealing with the tension and the ambiguity.  As mentioned above, it did not do it by listing a set of possible condition that would be tested against - except for those discussed in the Implementation Plan - which I cannot find, but remember as being restricted to Visual confusability as was DAGv1 at the time of the Board's approval for implementation.  What was provided was Recommendation 12:

> 12. Dispute resolution and challenge processes must be established prior to the start of the process.

I note that this is not specific about challenges regarding confusing similarly, but I do believe there was an expectation that confusing similarity could be challenged.  DAGv3 backs this up with:

> 2.1.1.1 String Similarity Review
> This review involves a preliminary comparison of each
> applied-for gTLD string against existing TLDs and against
> other applied-for strings. The objective of this review is to
> prevent user confusion and loss of confidence in the DNS.
> The review is to determine whether the applied-for gTLD
> string is so similar to one of the others that it would create a
> probability of detrimental user confusion if it were to be
> delegated into the root zone. 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.
> This similarity review will be conducted by an independent
> String Similarity Panel.

This shows that the attribute that will be tested for in the initial evaluation of new gTLDs is Visual confusion,  This corresponds to the special place given to Visual aspects of confusing similarity in all discussions of confusing similarity, i.e. as mentioned above, there is consensus about the need to test for visual confusion.  The consensus of the importance of visual confusion makes it unique among the possible causes of confusion. Whereas there is no consensus about other areas of possible likelihood of confusion except that they are grounds for objection. 


> 3.1.1 Grounds for Objection
> An objection may be filed on any one of the following four
> grounds:

> String Confusion Objection – The applied-for gTLD string is
> confusingly similar to an existing TLD or to another appliedfor
> gTLD string in the same round of applications.


and in

> 3.1.2 Standing to Object

> String confusion	 Existing TLD operator or gTLD applicant in
> current round
> 

4.  This brings me to my conclusion: that while visual confusing similarity is included and everyone is subject to that, any other form of possible likelihood to cause confusion must be declared in an objection and then will be adjudicated by the Review Panel according to relevant International law in relation to that particular objection.  So while it is ok, e.g. for Verisign to consider whether it will make a objection based on translation or meaning, until such time as they make such a objection and it is approved by the Review Panel, it is not, properly speaking, a criteria for confusing similarity, it is just a possibility that may be considered by a Review Panel. And even after that it would still not be a criteria for any other gTLD until the relevant registry had filed its own objection etc.

5. My proposed solution to this disagreement is that I am willing to quit saying the Visual confusing similarity is the only possible criteria for determining likelihood of confusion if others will refrain from saying that reasons such as translation have been included in the GNSO's recommendations and anything more then possible reasons for objection.  I do believe we can write a report that steers carefully between the Scylla and Charybdis of this debate.

6. What I have said about this during the course of this Drafting Team. 

Dec 11: -

>  i believe that we should just be stating the problem and not a solution. 

Dec 12: 

> Which says to me that it is a complex issue, but that visual similarity is the predominant factor in determining confusion.  And only in cases where you can expect the a person to know both languages would meaning enter into the issue as a complicating factor.  Likewise for phonetic comparisons.
> 
> So yes, confusion is the key.
> 
> Most can be eliminated based on visual confusion.
> 
> And for the others where there really is a complicating factor that may cause confusion, then and only then does phonetics and meaning come in - and it comes in at the challenge level.

Dec 15: 

> My problem with your re-write is that it presupposes that translation is a primary cause for 'confusingly similar'  and as I and others have argued, this is not universally accepted (though I do accept meaning as a possible complicating factor in an objection, I am not sure others even go that far).

> by lowest common denominator i meant the kind of similarity we can all agree would be included in the category 'confusingly similar'.

(though i was berated for not understanding my maths well enough to know what lowest common denominator really meant)

... (many similar comment )...

16 April

> Please show exactly in the report and in the DAG were it says what you think it says.  Certainly various issues are discussed, but there is no statement of a council decision for confusing similarity to be more the visual. 

As I said a lot was discussed but no decision was ever made to include more.  The point is made in the discussion of recommendation 2 in the  GNSO Recommendation:  

> There is tension between those on the Committee who are concerned about the protection of existing TLD strings and those concerned with the protection of trademark and other rights as compared to those who wish, as far as possible, to preserve freedom of expression and creativity. The Implementation Plan sets out a series of tests to apply the recommendation during the application evaluation process.

It is this tension that we are still expressing in this debate.

16 April

> I believe that it was never the intent of the GNSO Council to allow 'meaning' within the category of 'confusingly similar'.  

This is strong, yet I stand by it.  While there as the intention of the council to allow those with standing to object on any ground for which they could find a basis, including meaning, there was never a specific GNSO council decision to specifically include meaning as a specific element that would be tested for.  I.e I argue that it does not have the consensus status of visual likelihood of confusion.

7. How this related to the issue of the IDNG DT.

The issue we were discussing was whether a registry who had a LDH ASCII gTLD now would be able to apply for a name that would be considered confusing similar if others applied for it.  I agued that this is complicated by several factors.  Among those factors:

- Is this based on an initial evaluation visual likelihood to cause confusion or another objection based likelihood to cause confusion.

In the case of something failing the initial evaluation, I felt that this should be taken care fo in extended evaluation.  I later realized that  in DAGv3 Extended evaluation is not available for issues related to String Similarity.  So this is a problem that needs to be dealt with. So I supported, and support, a minimal report to the Council  that in the case of visual confusing similarity perhaps it should be possible to request an extended evaluation were a Registry can request the visually similar IDN GTLD based on their ownership of the LDH ASCII.  

In the case of a name that might be considered confusingly similar based on something like aural evaluation (i.e. transliteration) or translation I did not see a problem.  Since these criteria are only taken into account when someone with standing objects on that basis and I would not expect the registry to object to its own application for being confusingly similar based on meaning.  I figured the chance of that were rare - unless of course it was a question of a translation for 'commerce' or 'business' claimed by both com and biz - who would both have standing.

- In discussing two TLDs that are visually confusing, the council needs to determine what this means in terms of issues of confusion at the second level and the subject of TLD synchronicity.  Wile they may decide that this needs some policy considerations I am not tring to predetermine the result of that discussion - only saying that it has to happen before any decision is made on how to handle these situations.


8. What I recommended is that we present the council with an adequate description of this complex problem in careful words that make neither of the parties in this debate or others in the group uncomfortable. And we make recommendations about further work the council can consider within its work prioritization model if we so wish.