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

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

If I understand you correctly Avri, I think the answer is yes.  But that
is very different than claiming trade mark rights.

Chuck 

> -----Original Message-----
> From: owner-gnso-idng@xxxxxxxxx 
> [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of Avri Doria
> Sent: Wednesday, December 09, 2009 12:31 PM
> To: gnso-idng@xxxxxxxxx
> Subject: Re: [gnso-idng] Recommendation 2: Confusingly Similar strings
> 
> 
> 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
> > 
> > 
> > 
> > 
> > 
> > 
> > 
> > 
> 
> 
>