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

[Avri Doria <avri@xxxxxxx>]

Hi,

Yes, but wouldn't it meant that same logic pertains?

a.

On 9 Dec 2009, at 18:07, Gomes, Chuck wrote:

> 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
> 
> 
> 
> 
> 
> 
> 
>