Re: [gnso-idng] Recommendation 2: Confusingly Similar strings

["Gomes, Chuck" <cgomes@xxxxxxxxxxxx>]

Mike,

I didn't take Edmon's comments as you did.  As you know the definition of 
confusingly similar was based on trademark definitions but that doesn't mean 
that TLDs are TMs.   

Chuck


----- Original Message -----
From: owner-gnso-idng@xxxxxxxxx <owner-gnso-idng@xxxxxxxxx>
To: 'Edmon Chung' <edmon@xxxxxxxxxxxxx>; gnso-idng@xxxxxxxxx 
<gnso-idng@xxxxxxxxx>
Sent: Wed Dec 09 11:51:54 2009
Subject: RE: [gnso-idng] Recommendation 2: Confusingly Similar strings


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 
see it.

Mike Rodenbaugh
RODENBAUGH LAW
548 Market Street
San Francisco, CA  94104
(415) 738-8087
http://rodenbaugh.com 

-----Original Message-----
From: owner-gnso-idng@xxxxxxxxx [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of 
Edmon Chung
Sent: Wednesday, December 09, 2009 3:16 AM
To: gnso-idng@xxxxxxxxx
Subject: [gnso-idng] Recommendation 2: Confusingly Similar strings


Hi everyone,

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 
"confusingly similar".

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 
users.


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.


Edmon