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

[Milton L Mueller]

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.
> >>
> >> ----
> >