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

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

Please see below. Thanks for the good dialog.

Chuck 

> -----Original Message-----
> From: owner-gnso-idng@xxxxxxxxx 
> [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of Avri Doria
> Sent: Wednesday, December 16, 2009 7:04 AM
> To: gnso-idng@xxxxxxxxx
> Subject: Re: [gnso-idng] 3rd Draft on Sting Similarity
> 
> 
> 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.

Chuck: I don't believe there is anything in the report that relates it 
primarily to fraud.

>  I am arguing that nothing in the 
> GNSO recommendations makes 'meaning' a primary criteria.

Chuck: I agree and hopefully have never said that it is a primary criteria. 
What I have tried to say is that 'meaning' is one of several possible criteria 
and I have opposed saying that 'visual similarity' is the only criterion.
  
> Your arguments about protecting the investment in the good 
> name of .dpn have more to do with recommendation 3 then with 
> recommendation

Chuck: No.  Because there are no IP rights with gTLDs in and of themselves.

> 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.

Chuck: I never said it was the primary criteria.  See my comments above.

> 
> 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.

Chuck: I accept everything in the report including what you quote above.  I 
recognize that it is not black and white and that multiple factors have to be 
weighed. I think that is why Staff proposed evaluating the probabiliy of 
confusion.  I don't think there is any disagreement between us on this.

> 
> 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 te!
>  chnical criteria recommendation.

Chuck: My understanding is that the intent was to use definitions of confusing 
similarity to provide guidance for the definition but not in anyway to suggest 
that trademark law applies to Recommendation 2.

> 
> 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. 

Chuck: My objective is to make our statement clear and easily understandable.  
I think examples go a long ways in that regard. If we can come up with 
different examples that accomplish that, fine. I obviously do not find the 
example used as controversial but you and I will have to agree to disagree on 
that.
 
> 
> 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.
> >>>> 
> >>>> 
> >>>> 
> >> 
> >> 
> >> 
> 
> 
>