2007 introduction to new GTLD board report

[s s <concernedicannfollower@xxxxxxxxx>]

here is the link to the full report:



http://gnso.icann.org/issues/new-gtlds/council-report-to-board-pdp-new-gtlds-11sep07.pdf


as this is a long document i have provided one section that pertains to
this discussion :


*See Page 31 Reccomendation 2 of the GNSO.*



*This is what should have been done and what was expected to have been
done.*



*1.  Recommendation 2 Discussion -- Strings must not be confusingly similar
*

*to an existing top-level domain.   *

i)                    This recommendation has support from all the GNSO
Constituencies. Ms Doria accepted the recommendation with the concern
expressed below39

ii)                   The list of existing top-level domains is maintained
by IANA and is listed in full on ICANN's website40.  Naturally, as the
application process enables the operation of new top-level domains this
list will get much longer and the test more complex.  The RyC, in its
Impact Statement, said that "...This recommendation is especially important
to the RyC. ... It is of prime concern for the RyC that the introduction of
new gTLDs results in a ubiquitous experience for Internet users that
minimizes user confusion.  gTLD registries will be impacted operationally
and financially if new gTLDs are introduced that create confusion with
currently existing gTLD strings or with strings that are introduced in the
future.  There is a strong possibility of significant impact on gTLD
registries if IDN versions of existing ASCII gTLDs are introduced by
registries different than the ASCII gTLD registries.  Not only could there
be user confusion in both email and web applications, but dispute
resolution processes could be greatly complicated."  The ISPCP also stated
that this recommendation was "especially important in the avoidance of any
negative impact on network activities."   The RC stated that "...Registrars
would likely be hesitant to offer confusingly similar gTLDs due to customer
demand and support concerns.  On the other hand, applying the concept too
broadly would inhibit gTLD applicants and ultimately limit choice to
Registrars and their customers".

iii)                 There are two other key concepts within this
recommendation.  The first is the issue of "confusingly similar"41 and the
second "likelihood of confusion".   There is extensive experience within
the Committee with respect to trademark law and the issues found below have
been discussed at length, both within the Committee and amongst the
Implementation Team.

iv)                 The Committee used a wide variety of existing law42 ,
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 trademarks43.
For example, the Committee considered the World Trade Organisation's TRIPS
agreement, in particular Article 16 which discusses the rights which
are conferred
to a trademark owner.44  In particular, the Committee agreed upon an
expectation that strings must avoid increasing opportunities for entities
or individuals, who operate in bad faith and who wish to defraud
consumers.  The Committee also considered the Universal Declaration of
Human Rights45 and the International Covenant on Civil and Political Rights
which address the "freedom of expression" element of the Committee's
deliberations.

v)                  The Committee also benefited from the work of the
Protecting the Rights of Others Working Group (PRO-WG).  The PRO-WG
presented its Final Report46 to the Committee at the June 2007 San Juan
meeting.  The Committee agreed that the Working Group could develop some
reference implementation guidelines on rights protection mechanisms that
may inform potential new TLD applicants during the application process.  A
small ad-hoc group of interested volunteers are preparing those materials
for consideration by the Council by mid-October 2007.

vi)                 The Committee had access to a wide range of differing
approaches to rights holder protection mechanisms including the United
Kingdom, the USA, Jordan, Egypt and Australia47

vii)               In addition, the Committee referred to the 1883 Paris
Convention on the Protection of Industrial Property48.  It describes the
notion of confusion and describes creating confusion as  "to create
confusion by any means whatever" {Article 10bis (3) (1} and, further, being
"liable to mislead the public" {Article 10bis (3) (3)}.  The treatment of
confusingly similar is also contained in European Union law (currently
covering twenty-seven countries) and is structured as follows.   "...because
of its identity with or similarity to...there exists a likelihood of
confusion on the part of the public...; the likelihood of confusion includes
the likelihood of association..." {Article 4 (1) (b) of the 1988 EU Trade
Mark directive 89/104/EEC}.  Article 8 (1) (b) of the 1993 European Union
Trade Mark regulation 40/94 is also relevant.

viii)              In the United States, existing trade mark law requires
applicants for trademark registration to state under penalty of perjury
that "...to the best of the verifier's knowledge and belief, no other person
has the right to use such mark in commerce either in the identical form
thereof or in such near resemblance thereto 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..." which is contained in Section 1051 (3)
(d) of the US Trademark Act 2005 (found at
http://www.bitlaw.com/source/15usc/1051.html.)49

ix)                 In Australia, the Australian Trade Marks Act 1995
Section 10 says that "...For the purposes of this Act, a trade mark is taken
to be deceptively similar to another trade mark if it so nearly resembles
that other trade mark that it is likely to deceive or cause confusion"
(found at http://www.ipaustralia.gov.au/resources/legislation_index.shtml)

x)                  A number of different trademark offices provide
guidance on how to interpret confusion.  For example, 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.  A mere visual similarity may create
a likelihood of confusion.  Confusion is based on the fact that the
relevant public does not tend to analyse a word in detail but pays more
attention to the distinctive and dominant components.  Similarities are
more significant than dissimilarities.  The visual comparison is based on
an analysis of the number and sequence of the letters, the number of words
and the structure of the signs.  Further particularities may be of
relevance, such as the existence of special letters or accents that may be
perceived as an indication of a specific language.  For words, the visual
comparison coincides with the phonetic comparison unless in the relevant
language the word is not pronounced as it is written.  It should be assumed
that the relevant public is either unfamiliar with that foreign language,
or even if it understands the meaning in that foreign language, will still
tend to pronounce it in accordance with the phonetic rules of their native
language.  The length of a name may influence the effect of differences.
The shorter a name, the more easily the public is able to perceive all its
single elements. Thus, small differences may frequently lead in short words
to a different overall impression. In contrast, the public is less aware of
differences between long names.  The overall phonetic impression is
particularly influenced by the number and sequence of syllables."  (found
at http://oami.europa.eu/en/mark/marque/direc.htm).

xi)                 An extract from the United Kingdom's Trade Mark
Office's Examiner's Guidance Manual is useful in explaining further the
Committee's approach to developing its Recommendation.  "For likelihood of
confusion to exist, it must be probable, not merely possible that confusion
will arise in the mind of the average consumer. 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)

xii)               The Committee also looked in detail at the existing
provisions of ICANN's Registrar Accreditation Agreement, particularly
Section 3.7.7.950 which says that "...The Registered Name Holder shall represent
that, to the best of the Registered Name Holder's knowledge and belief,
neither the registration of the Registered Name nor the manner in which it
is directly or indirectly used infringes the legal rights of any third
party."

xiii)              The implications of the introduction of
Internationalised Domain Names (IDNs) are, in the main, the same as for
ASCII top-level domains.  On 22 March 2007 the IDN-WG released its Outcomes
Report51 that the Working Group presented to the GNSO Committee.  The
Working Group's exploration of IDN-specific issues confirmed that the new
TLD recommendations are valid for IDN TLDs.  The full IDN WG Report is
found in Part B of the Report.

xiv)             The technical testing for IDNs at the top-level is not yet
completed although strong progress is being made.  Given this and the other
work that is taking place around the introduction of IDNs at the top-level,
there are some critical factors that may impede the immediate acceptance of
new IDN TLD applications.  The conditions under which those applications
would be assessed would remain the same as for ASCII TLDs.

xv)               Detailed work continues on the preparation of an
Implementation Plan that reflects both the Principles and the
Recommendations.  The proposed Implementation Plan deals with a
comprehensive range of potentially controversial (for whatever reason)
string applications which balances the need for reasonable protection of
existing legal rights and the capacity to innovate with new uses for top
level domains that may be attractive to a wide range of users52

xvi)             The draft Implementation Plan (included in the Discussion
Points document), illustrates the flow of the application and evaluation
process and includes a detailed dispute resolution and extended evaluation
tracks designed to resolve objections to applicants or applications.

xvii)            There is tension between those on the Committee who are
concerned about the protection of existing TLD strings and those concerned
with the protection of trademark and other rights as compared to those who
wish, as far as possible, to preserve freedom of expression and
creativity.  The Implementation Plan sets out a series of tests to apply
the recommendation during the application evaluation process.