RE: [gnso-idn-wg] Comments on notes of 30 Jan

["Mike Rodenbaugh" <mxr@xxxxxxxxxxxxx>]

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: owner-gnso-idn-wg@xxxxxxxxx [mailto:owner-gnso-idn-wg@xxxxxxxxx]
On Behalf Of Avri Doria
Sent: Tuesday, February 06, 2007 1:18 PM
To: gnso-idn-wg@xxxxxxxxx
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.