--- Mawaki Chango <[log in to unmask]> wrote: > Date: Thu, 8 Feb 2007 15:19:47 -0800 (PST) > From: Mawaki Chango <[log in to unmask]> > Subject: RE: [gnso-idn-wg] Comments on notes of 30 Jan > To: Mike Rodenbaugh <[log in to unmask]>, [log in to unmask] > > Mike: Does your exposé about trademark rights mean to confirm that > what the WG referred to in that para about "ex ante rights" was > trademark, and maybe intellectual property, rights? And this in the > context of cross-script and IDN gTLD? > > > Let's not forget that we are eventually to recommend a policy to > ICANN, and it is necessary to keep in mind the scope of ICANN's > mission. It appears to me that this position would lead ICANN in a > situation of adopting a kind of hard regime regulatory role, while > I'm not even sure that there is an ICANN executive who publicly > just > admits that the organization has any regulatory role! > > The notion of "confusingly similar" may have a good career in the > US > courtrooms but is it so, universally? Do we have one global law > addressing IPR and trademark issues in the same manner? Is ICANN's > global governance intended to exclusively apply US norms globally? > Is > even UDRP, for example, a globally accepted mechanism for > addressing > litigations in the TLD (I clearly mean at the top level) or only > from > second and lower levels so far? > > Let me follow up on your example with "yahoo" (I'm Ok taking that > name because it's not (yet) a TLD name, and it sounds... nice!) We > seem to be saying that Yahoo!, Inc. is proprietary of the sound > that > one makes while pronouncing that corporation's name, as long as > Internet and trade/business are concerned. So that if it turns out > that in a totally different linguistic universe, there is a word > written in their own different script but making the same sound as > "yahoo" when pronounced, that language community should be > prohibited > from ever using that word of theirs to identify themselves on the > Internet, especially in the DNS. > > Let ne first say that I'm not trying to contempt trademark > interests > (though some may be surprised about this, but really, am not!) I > just > think, sincerely, that it is a bold and wrong step to make ICANN > endorse such a policy _a priori_. I don't think it has that > authority, and think where broader interpretations/perceptions of > "confusingly similar" beyond "typographically similar" might be > involved, it is better to let it assess IDN gTLD applications on > case > by case basis. There might be very legitimate reasons for people to > use a specific world in their language and script, which just > happens > accidentally to sound like another brandname in ASCII, they should > be > given the possibility to make their point (by applying for it,) and > ICANN to assess the actual issues related to such situation in > order, > if possible, to find a fair and satisfactory ground to both parties > and take ultimate decision, or refer the case to the competent > jurisdictional and legal authorities if necessary. > > In fact, I figure that in most situations such scenario might not > even be a threat to the ascii-based trademark holders. Because the > natives of the hypothetical language where there would be a word > sounding like "yahoo" would in fact hear such world and perceive > its > meaning in their own language first, before they can possibly > think, > "Yahoo!, Inc." has a name that sounds like that word (in their > language,) not the other way around. As to those for whom that > language is not natural, an IDN gTLD will just be a string of > characters rather than a sound and a meaning they can relate to. > > My dear friends from the Business constituency got me convinced > with > the new gTLDs PDP discussion that we need to support competition > even > at the top level, and I have to say I'm a bit surprised that that > position doesn't seem to hold any longer when it comes to IDN - > even > if that necessitates inventing phonetical and semantical rights > (from > one language or script) across all languages and scripts. > > The bottom line is, making a policy that would potentially and > automatically prohibit from the DNS the use of some words by people > in their own language, for the sake of avoiding all forms of > proximity/similarity with brand that already exists is a > heavy-handed > policy to put in ICANN's hands. While, if we keep this clearer and > light-handed (at the minimum understandable and acceptable by all) > by > sticking to "typographic similarity," every party will still have > the > possibility to make a claim and seek a fair decision should a real > threat occur, if at all. > > > Best, > > Mawaki > > > > --- Mike Rodenbaugh <[log in to unmask]> wrote: > > > There is no question, legally speaking, that trademark rights do > > give > > rights to domain strings. The ICANN community seems to have > > reached > > consensus as to that reality long ago, via adoption of sunrise > > provisions as to strings that are identical to trademarks. > > Regardless, > > UDRP and court decisions have held that passive registration of a > > domain, preventing use by the trademark owner, can amount to bad > > faith > > registration and trademark infringement. > > > > Furthermore, trademark owners can preclude the use of > non-identical > > strings when such use is likely to confuse consumers. Thousands > of > > UDRP > > decisions have found bad faith as to strings not identical to the > > trademark in question. > > > > Typographical vs. Visual Confusion: > > > > It is only the end user perception that is relevant to the > > trademark > > analysis, not the underlying punycode rendering. Yet, again > there > > is no > > question that trademark rights not only trump use of marks that > > "appear" > > confusingly similar to the trademark, but also marks that "sound" > > confusingly similar (Yahoo!, Yahu, Yahoux, Yawho) and marks that > > have > > the same "meaning" (Yahoo! Mail and Yahoo! Correo (Spanish) are > > legally > > equivalent for purposes of TM analysis). > > > > I appreciate Mawaki forwarding the string about 'typographical' > > similarity and think that can be a useful distinction as opposed > to > > overall 'confusing similarity' which must also include the other > > two > > types. I agree with Avri and others that it may be harder for a > > registry to make discretionary decisions about phonetic > similarity > > and > > equivalence of 'meaning' than about typo similarity. > > > > However, businesses are concerned about all confusing > similarities > > with > > respect to their trademarks, since the law protects against all > > confusing similarity in order to protect consumers. And the > > registry is > > profiting from trademark infringement in any case of confusing > > similarity. Therefore our policy work ought to consider all > types, > > but > > I think these issues may be better left to the new WG formed to > > address > > IP protections in new TLDs. > > > > Mike Rodenbaugh > > Sr. Legal Director > > Yahoo! Inc. > > > > -----Original Message----- > > From: [log in to unmask] > > [mailto:[log in to unmask]] > > On Behalf Of Avri Doria > > Sent: Tuesday, February 06, 2007 1:18 PM > > To: [log in to unmask] > > Subject: [gnso-idn-wg] Comments on notes of 30 Jan > > > > > > > > hi, > > > > Re: > > > > > 5.2 Support for a country's rights to define strings for the > > > country name. Alternative view; to also accept a country's > > > responsibility/right to approve any gTLD strings featuring its > > > > particular script, if unique for that country. Alternative > view; > > to > > > also acknowledge a country's right to influence the > definitions/ > > > tables of its scripts/languages. Alternative view; to require a > > > > country's support for a gTLD string in "its" script, in analogy > > > > with the issue of geo-political names. Ancillary view: > > recognition > > > that countries' rights are limited to their respective > > jurisdictions. > > > > > > I am pretty sure I expressed the view that no such right existed > > and > > that ICANN defining any such right was inappropriate. > > > > a. > > > > > > > > > > > > > >