RE: [gnso-idng] Recommendation 2: Confusingly Similar strings
- To: "'Edmon Chung'" <edmon@xxxxxxxxxxxxx>, <gnso-idng@xxxxxxxxx>
- Subject: RE: [gnso-idng] Recommendation 2: Confusingly Similar strings
- From: "Mike Rodenbaugh" <icann@xxxxxxxxxxxxxx>
- Date: Wed, 9 Dec 2009 08:51:54 -0800
Edmon, I think you are implying that .asia is a trademark of dotAsia? While I
completely agree with that, I believe your ICANN contract says otherwise?
This is also an open issue in US and European trademark law, with the weight of
authority to date holding that a TLD string can not function as a trademark. I
think that authority has almost entirely focused on the significance of .com as
a trademark, and is extremely wrong in the modern context of dozens, soon
hundreds of new TLDs. But for now, it is what it is. It is certainly an issue
that ought to be clarified in the DAG and the new model registry agreement, but
of course is not unique to IDNs.
I have filed a brief on the issue with the US trademark office if you wish to
548 Market Street
San Francisco, CA 94104
From: owner-gnso-idng@xxxxxxxxx [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of
Sent: Wednesday, December 09, 2009 3:16 AM
Subject: [gnso-idng] Recommendation 2: Confusingly Similar strings
Based on some study of the GNSO Final Report, it seems to me that we do not
need any new policy for addressing the issue of application for a confusingly
similar string by an applicant who is the registry (existing / future /
proposed) of the source of that confusing similarity.
In retrospect, at least on this issue, it was a good choice to have utilized
existing legal framework and international treaties as the basis of
While I am not a lawyer, it seems to me from the reading of that body of
work/reference, that the concept of confusingly similar applies to that when
used by another entity. If the application is from the same entity, then it is
in itself not "confusing"ly similar.
Perhaps, those who are a lawyer can correct me...
So, I think we can propose a resolution for the GNSO to clarify this issue
based on the following:
While recommendation 2 in the GNSO Final Report states:
Recommendation 2: Strings must not be confusingly similar to an existing
top-level domain or a Reserved Name.
The detailed discussion on the recommendation includes:
vii-xi) Extracts describing the concept of "confusingly similar". More
importantly that they correspond to a mark being confusingly similar to another
mark held by another entity, which would likely cause confusion, or to cause
mistake, or to deceive. The key part being it held by another entity.
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
With the action item to either inform staff to include the item in the
implementation (i.e. DAG), OR have an implementation team to provide specific
directives to staff on the issue.