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

Wed Apr 21 16:37:54 CEST 2010

Dear all,

Sorry to be joining this discussion late. Under trademark law there is a different legal standard for confusingly similar and for likelihood of confusion. DAG fails to makes this sort of distinction but most importantly and what all Registries need to understand is that 'confusion' depends on use of the mark and its associated goodwill of the product or service. This, as we all know, is something that does not apply in the case of gTLDs and more generally domain names. Consumer confusion can only kick in and become a viable argument if infringement is determined according to use - otherwise we cannot speak about consumer confusion.

KK

Dr. Konstantinos Komaitis,
Law Lecturer,
University of Strathclyde,
The Law School,
The Lord Hope Building,
141 St. James Road,
Glasgow, G4 0LT
UK
tel: +44 (0)141 548 4306
http://www.routledgemedia.com/books/The-Current-State-of-Domain-Name-Regulation-isbn9780415477765
Selected publications: http://hq.ssrn.com/submissions/MyPapers.cfm?partid=501038
Website: http://domainnamelaw.ning.com/

-----Original Message-----
From: Non-Commercial User Constituency [mailto:NCUC-DISCUSS at LISTSERV.SYR.EDU] On Behalf Of Avri Doria
Sent: Sunday, April 18, 2010 6:57 AM
To: NCUC-DISCUSS at LISTSERV.SYR.EDU
Subject: Re: are confusing similar gTLDs not confusing if the same registry has them all?

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