Re: [gnso-idng] 3rd Draft on Sting Similarity

[Avri Doria <avri@xxxxxxx>]

Hi,

1. I do not believe you have proven anything.  You have shown one statement 
that indicates that meaning may need to be taken into account if it can be 
shown to be material.  I agree that meaning can be brought into discussions 
when it is relevant, predominantly in objections in cases where the intent is 
to commit fraud.  I am arguing that nothing in the GNSO recommendations makes 
'meaning' a primary criteria.  Your arguments about protecting the investment 
in the good name of .dpn have more to do with recommendation 3 then with 
recommendation 2.  Otherwise you have just argued frequently and insistently 
that 'meaning' is there and was the intent, but that is just not the case.  Do 
go back to the record and show me where the Council discussed inclusion of 
meaning as a primary criteria for confusingly similar and where we reached 
consensus (even rough consensus) on that issue.  It is not in the report and I 
do not expect you will find it in the record.

2. If you read the substantiating comments you will see that almost all of the 
discussion is about visual and aural issues with meaning only mentioned in the 
context of the case where it can be expected that the average customer would 
understand both languages. In the only quote that references meaning:

> For words, the visual comparison coincides with the phonetic comparison 
> unless in the relevant language the word is not pronounced as it is written. 
> It should be assumed that the relevant public is either unfamiliar with that 
> foreign language, or even if it understands the meaning in that foreign 
> language, will still tend to pronounce it in accordance with the phonetic 
> rules of their native language.

Meaning is only referenced in a conditional reference not as a primary 
condition for judging similarly.

Additionally that section specifically mentions:

> Mere association, in the sense that the later mark brings the earlier mark to 
> mind is insufficient to find a likelihood of confusion, unless the average 
> consumer, in bringing the earlier mark to mind, is led to expect the goods or 
> services of both marks to be under the control of one single trade source

Which I read to state that even if you might associated a translated name with 
an existing LDH names it would take a average consumer explanation in order to 
be probative.  I.e the average Chinese consumer would need to be confused in 
recognizing   .鸭汤 as being similar to .duck-soup.

3. International Trademark law, as far as this non lawyer but child of a lawyer 
can tell, is not consistent on the subject of the significance of meaning - but 
in general it must be shown that there is either confusion in the average 
individual or an intent to mislead, 'meaning' in itself, however, does not seem 
to be sufficient without supporting conditions.  BTW, in the new gTLD process I 
only registered a concern, that recommendation 2 could be abused by use of 
trademark law to make it apply to translations as well as to objective 
technical criteria, thus making it a duplicate of Recommendation 3.  As I learn 
more about trademark law (long way to go yet), I find that it can be used to 
exclude meaning as often, if not more, then it can used to include meaning.  As 
far as I can tell international trademark law is multifaceted on this issue, 
but I am not a trademark lawyer.  But yes, you are right I was in the minority 
in relations to the application of trademark law to a technical criteria 
recommendation.

4. A more detailed case would need to built with the help of those trained in 
trademark law, I will recruit some trademark lawyers to help me build this case 
to satisfy your request for a legally valid argument.    This will take time, 
but this disagreement is not going to go away anytime soon.

5. This does not seem the place for this argument.  That is why i continue to 
insist we use examples that are non controversial.  

cheers

a.



On 16 Dec 2009, at 02:13, Gomes, Chuck wrote:

> Please show me anything that says that the definition of confusingly
> similar is only visual.  I have pointed out a great deal of detail that
> shows otherwise.  Are you suggesting that that detail should be ignored?
> 
> Chuck 
> 
>> -----Original Message-----
>> From: owner-gnso-idng@xxxxxxxxx 
>> [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of Avri Doria
>> Sent: Tuesday, December 15, 2009 4:39 PM
>> To: gnso-idng@xxxxxxxxx
>> Subject: Re: [gnso-idng] 3rd Draft on Sting Similarity
>> 
>> 
>> hi,
>> 
>> And this is where we disagree.  I claim that this is not what 
>> the council decided and that you are taking a wider 
>> interpretation then is warranted.
>> 
>> I agree that this is not the place to hash this out (will 
>> probably end up in the courts before it is actually decided), 
>> and that is why I am asking that we avoid something subject 
>> to interpretation in the use of examples, especially when non 
>> controversial examples can be constructed.
>> 
>> a.
>> 
>> 
>> 
>> On 15 Dec 2009, at 22:04, Gomes, Chuck wrote:
>> 
>>> Whether the people in this group agree or not, the GNSO Council 
>>> already included more than visual similarity in the 
>> definition.  It is 
>>> not our task to change those recommendations.  That is why 
>> I disagreed 
>>> with the use of "lowest common denominator" because I 
>> suspected that 
>>> you meant that.
>>> 
>>> Chuck
>>> 
>>>> -----Original Message-----
>>>> From: owner-gnso-idng@xxxxxxxxx
>>>> [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of Avri Doria
>>>> Sent: Tuesday, December 15, 2009 3:31 PM
>>>> To: gnso-idng@xxxxxxxxx
>>>> Subject: Re: [gnso-idng] 3rd Draft on Sting Similarity
>>>> 
>>>> 
>>>> 
>>>> On 15 Dec 2009, at 20:31, Gomes, Chuck wrote:
>>>> 
>>>>> 
>>>>> I do not disagree with the fact that there can be visual 
>> similarity.
>>>>> What I disagree with is that visual similarity is the 
>> lowest common 
>>>>> denominator.
>>>> 
>>>> 
>>>> by lowest common denominator i meant the kind of similarity we can 
>>>> all agree would be included in the category 'confusingly similar'.
>>>> 
>>>> what do you believe is the LCD definition of confusingly 
>> similar that 
>>>> we can all agree :  'yes, at least that is included'
>>>> 
>>>> a.
>>>> 
>>>> 
>>>> 
>> 
>> 
>>