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- > [log in to unmask]] On Behalf Of Avri Doria > Sent: Saturday, April 17, 2010 11:07 AM > To: [log in to unmask] > 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- > >> [log in to unmask]] On Behalf Of Avri Doria > >> Sent: Friday, April 16, 2010 10:27 PM > >> To: [log in to unmask] > >> 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. > >> > >> ---- > >