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

[Avri Doria <avri@xxxxxxx>]

Hi,

I was arguing that as far as I know, countries had no international  
jurisdiction over scripts and alphabets (though they may claim them)  
and that ICANN should not get involved in trying to define such a  
'right' and thus giving countries an enhanced ability to prohibit  
various strings, e.g. censure, in their chosen script or language.

I think the issue of business rights that are tied up in trademarks  
law and their applicability to DNS labels (or the punycode encoding  
of that label) is a different and complex issue.  Certainly there  
does appear to be a local (for some definition of local) right (for  
some definition of right) of trademarks that is occasionally expanded  
by treaty and bi/multilateral agreement and is being applied to  
labels.  And yes, it does make sense to have the discussion of what  
degree, if any, of privilege this gives mark holders over other  
rights holders in various jurisdictions to the new Working Group on  
"Protecting the rights of others".  I look forward to discussing it  
there.

a.


On 7 feb 2007, at 21.37, Mike Rodenbaugh 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: 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.