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

[Mawaki Chango <ki_chango@xxxxxxxxx>]

Mike: Does your exposé about trademark rights mean to confirm that
what the WG referred to in that para about "ex ante rights" was
trademark, and maybe intellectual property, rights? And this in the
context of cross-script and IDN gTLD?


Let's not forget that we are eventually to recommend a policy to
ICANN, and it is necessary to keep in mind the scope of ICANN's
mission. It appears to me that this position would lead ICANN in a
situation of adopting a kind of hard regime regulatory role, while
I'm not even sure that there is an ICANN executive who publicly just
admits that the organization has any regulatory role!

The notion of "confusingly similar" may have a good career in the US
courtrooms but is it so, universally? Do we have one global law
addressing IPR and trademark issues in the same manner? Is ICANN's
global governance intended to exclusively apply US norms globally? Is
 even UDRP, for example, a globally accepted mechanism for addressing
litigations in the TLD (I clearly mean at the top level) or only from
second and lower levels so far?

Let me follow up on your example with "yahoo" (I'm Ok taking that
name because it's not (yet) a TLD name, and it sounds... nice!) We
seem to be saying that Yahoo!, Inc. is proprietary of the sound that
one makes while pronouncing that corporation's name, as long as
Internet and trade/business are concerned. So that if it turns out
that in a totally different linguistic universe, there is a word
written in their own different script but making the same sound as
"yahoo" when pronounced, that language community should be prohibited
from ever using that word of theirs to identify themselves on the
Internet, especially in the DNS.

Let ne first say that I'm not trying to contempt trademark interests
(though some may be surprised about this, but really, am not!) I just
think, sincerely, that it is a bold and wrong step to make ICANN
endorse such a policy _a priori_. I don't think it has that
authority, and think where broader interpretations/perceptions of
"confusingly similar" beyond "typographically similar" might be
involved, it is better to let it assess IDN gTLD applications on case
by case basis. There might be very legitimate reasons for people to
use a specific world in their language and script, which just happens
accidentally to sound like another brandname in ASCII, they should be
given the possibility to make their point (by applying for it,) and
ICANN to assess the actual issues related to such situation in order,
if possible, to find a fair and satisfactory ground to both parties
and take ultimate decision, or refer the case to the competent
jurisdictional and legal authorities if necessary.

In fact, I figure that in most situations such scenario might not
even be a threat to the ascii-based trademark holders. Because the
natives of the hypothetical language where there would be a word
sounding like "yahoo" would in fact hear such world and perceive its
meaning in their own language first, before they can possibly think,
"Yahoo!, Inc." has a name that sounds like that word (in their
language,) not the other way around. As to those for whom that
language is not natural, an IDN gTLD will just be a string of
characters rather than a sound and a meaning they can relate to.

My dear friends from the Business constituency got me convinced with
the new gTLDs PDP discussion that we need to support competition even
at the top level, and I have to say I'm a bit surprised that that
position doesn't seem to hold any longer when it comes to IDN - even
if that necessitates inventing phonetical and semantical rights (from
one language or script) across all languages and scripts.

The bottom line is, making a policy that would potentially and
automatically prohibit from the DNS the use of some words by people
in their own language, for the sake of avoiding all forms of
proximity/similarity with brand that already exists is a heavy-handed
policy to put in ICANN's hands. While, if we keep this clearer and
light-handed (at the minimum understandable and acceptable by all) by
sticking to "typographic similarity," every party will still have the
possibility to make a claim and seek a fair decision should a real
threat occur, if at all.


Best,

Mawaki 



--- Mike Rodenbaugh <mxr@xxxxxxxxxxxxx> 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.
> 
> 
> 
> 
>