NCUC:
Below is a draft statement on the GNSO's policy
recommendation for
IDNs: “confusingly similar strings must be avoided.”
We need to submit it in the next day or so, so
please let me know
soon if you have any suggestions for improving it.
Thanks,
Robin
----------------
Non-Commercial Users Constituency
Minority Statement on item 10 of the Executive
Summary of the GNSO
Comments in Response to the ccNSO-GAC Issues Report
on IDN Issues:
“Confusingly similar strings must be avoided.”
This minority report address the wording of item 10
of the Executive
Summary of the GNSO Comments in Response to the
ccNSO-GAC Issues
Report on IDN Issues (the “GNSO Comments”)[1], as it
presently states
that “confusingly similar strings must be avoided.”
This wording was previously used by the GNSO Council
at its “Policy
recommendations and implementation guidelines for
the introduction of
new top-level domains”.[2] At the final draft
report, Recommendation
no. 02 states that: “Strings must not be confusingly
similar to an
existing top-level domain.” For reference purposes,
a footnote
relates the “confusingly similar” expression with
item 4(a) of the
UDRP.[3]
We object to the adoption of the misleading wording
“confusingly
similar” in the GNSO Comments, grounded in the
following arguments:
1. Expansion of trademark rights to a broader field
of elements
In adopting the “confusingly similar” expression, as
it is used by
item 4(a) of the UDRP, the GNSO Comments expand the
trademark logic
of protection to a wider range of elements,
especially in what
concerns with domain names and the way countries can
refer to
themselves through domain names.
In adopting this kind of wording, the GNSO Comments
would be equating
domain names with trademarks as properties that
could be legally
protectable. Such expansion of trademark logics to
other elements,
such as domain names, not only broader the scope of
ICANN authority,
as addressed bellow, but also is incorrect in legal
terms.
In her “Legal Briefing Paper on GNSO Recommendations
for Domain Name
Policy”, American University Law Professor Christine
Haight Farley
stated that “trademarks are legally protected
intellectual property
because it is believed that the commercial use of a
mark by another
that is likely to cause confusion would injure
consumers. Trademarks
are legally protectable intellectual property also
because their
owners have developed valuable goodwill in the
marks. Neither of
these conditions of legal protection apply in the
case of domain
names.”[4]
Non-commercial users of domain names will be
unfairly discouraged
from using trademarks. Even though a trademark law
analysis would
permit a broad range of confusingly similar domain
names that are
used for non-commercial purposes, the GNSO’s
recommendation would not.
Perhaps a better policy choice might be to look to
the private sector
and open source software developers to create new
software that can
better prevent confusion caused by similar words,
such as new fonts.
2. Only technical issues within scope of ICANN
authority
In maintaining the “confusingly similar” expression
at item 10 of its
Executive Report, the GNSO Comments do not narrow
the scope of ICANN
authority to deal with cases related to technical
confusion. On the
contrary, it empowers ICANN to act in fields that it
does not have
adequate authority to decide upon, as the adequate
ways through which
a country or community can designate themselves.
As the GNSO Comments address domain names, it is
important to
highlight that a domain name, by itself, does not
cause confusion,
but only with relation to how the domain is used. In
maintaining the
general confusion wording the GNSO Comments surpass
the concept of
technical stability and seems to end up regulating
other fields of
expression and consumer protection that are outside
ICANN´s authority.
3. “Confusion similarity” and “likelihood of
confusion”
There is also another issue of concern regarding the
definition of
what could be considered as “confusingly similar”
strings. In her
“Legal Briefing Paper on GNSO Recommendations for
Domain Name
Policy”, Law Professor Christine Haight Farley has
addressed this
topic, stating that “confusing similarity” and
“likelihood of
confusion” are two different concepts.[5]
As mentioned in her Legal Briefing: “A determination
about whether
use of a mark by another is “confusingly similar” is
simply a first
step in the analysis of infringement. As the
committee correctly
notes, account will be taken of visual, phonetic and
conceptual
similarity. But this determination does not end the
analysis. Delta
Dental and Delta Airlines are confusingly similar,
but are not likely
to cause confusion, and therefore do not infringe.
As U.S. trademark
law clearly sets out, the standard for infringement
is where the use
of a mark is such “as to be likely, when used on or
in connection
with the goods of such other person, to cause
confusion, or to cause
mistake, or to deceive…” While it may be that most
cases of
confusing similarity are likely to cause confusion,
because the
infringement standard takes account of how the mark
is