RE: [gnso-idng] reporting back to the council

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

Avri,

Please see my response below.

Chuck

Let me first start with your minority statement that accompanied the
final GNSS Report:
http://gnso.icann.org/issues/new-gtlds/pdp-dec05-fr-parta-08aug07.htm#_T
oc48210874.  If you believed that the GNSO report defined confusing
similarity as visual only and that that was a position of the GNSO
Council, then it would not have been necessary for you to express the
following reservations about that recommendation:

"In the first instance I believe that this is essentially a technical
issue that should have been resolved with reference to typography,
homologues, orthographic neighbourhood, transliteration and other
technically defined attributes of a name that would make it
unacceptable. There is a large body of scientific and technical
knowledge and description in this field that we could have drawn on."

"By using terms that rely on the legal language of trademark law, I
believe we have created an implicit redundancy between recommendations 2
and 3. I.e., I believe both 2 and 3 can be used to protect trademarks
and other intellectual property rights, and while 3 has specific
limitations, 2 remains open to full and varied interpretation."

"As we begin to consider IDNs, I am concerned that the interpretations
of confusingly similar may be used to eliminate many potential TLDs
based on translation. That is, when a translation may have the same or
similar meaning to an existing TLD, that the new name may be eliminated
because it is considered confusing to users who know both."

Now let me focus on the language in the final report.  Please see the
Recommendation 2 Discussion in the report, the first item under the
subtitle "TERM OF REFERENCE -- SELECTION CRITERIA".  I first call your
attention to the first item: "i) This recommendation has support from
all the GNSO Constituencies. Ms Doria accepted the recommendation with
the concern expressed below[39]."  As you know, your concerns are the
ones pasted above.

Item iii confirms that the issue discussion that ". . . the issues found
below have been discussed at length, both within the Committee and
amongst the Implementation Team."  The discussion goes on in item iv to
say, "The Committee used a wide variety of existing law[42],
international treaty agreements and covenants to arrive at a common
understanding that strings should not be confusingly similar either to
existing top-level domains like .com and .net or to existing
trademarks[43]."  I won't quote all of them here because there are a lot
of them but let me quote a few that are particularly relevant to our
discussion now.

Item vii says, ". . .  the 1883 Paris Convention on the Protection of
Industrial Property[48]. It describes the notion of confusion and
describes creating confusion as "to create confusion by any means
whatever"".

Item x says, ". . . the European Union Trade Mark Office provides
guidance on how to interpret confusion. "...confusion may be visual,
phonetic or conceptual. A mere aural similarity may create a likelihood
of confusion."

Item xi says, ". . . Likelihood of association is not an alternative to
likelihood of confusion, "but serves to define its scope". 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. "The risk that the public might believe that the
goods/services in question come from the same undertaking or, as the
case may be, from economically-linked undertakings, constitutes a
likelihood of confusion...". (found at
http://www.patent.gov.uk/tm/t-decisionmaking/t-law/t-law-manual.htm)"

There is of course much more in this discussion than I quoted above but
I don't there is anything that says that visual similarity is the only
area of possible confusion.  If you can find anything in the report that
says that, please point it out.

As you know, the ICANN Staff implementation team attempted in their
early steps to limit confusing similarity to visual similarity only and
I challenged them on that several times, pointing them to the discussion
section mentioned above. Consequently, in DAG3 we find the following:
"The visual similarity check that occurs during Initial Evaluation is
intended to augment the objection and dispute resolution process (see
Module 3, Dispute Resolution Procedures) that addresses all types of
similarity. (From DAG3 section 2.1.1.1)"  The standards for a string
confusion dispute are found in DAG3 section 3.4.1: "A DRSP panel hearing
a string confusion objection will consider whether the applied-for gTLD
string is likely to result in string confusion. String confusion exists
where a string so nearly resembles another that it is likely to deceive
or cause confusion. For a likelihood of confusion to exist, it must be
probable, not merely possible that confusion will arise in the mind of
the average, reasonable Internet user. Mere association, in the sense
that the string brings another string to mind, is insufficient to find a
likelihood of confusion."  Note there is no restriction to visual
similarity only.

> -----Original Message-----
> From: owner-gnso-idng@xxxxxxxxx 
> [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of Avri Doria
> Sent: Friday, April 16, 2010 5:08 PM
> To: gnso-idng@xxxxxxxxx
> Subject: Re: [gnso-idng] reporting back to the council
> 
> 
> Hi,
> 
> Please show exactly in the report and in the DAG were it says 
> what you think it says.  Certainly various issues are 
> discussed, but there is no statement of a council decision 
> for confusing similarity to be more the visual.  I cannot 
> recall or find such a decision.  I have gone looking and do 
> not find it.  Yet, you keep repeating this as if repeating 
> will make is so without showing exactly where this is proven 
> to be the case.
> 
> As for my minority statement, i merely mention a concern that 
> people might start doing what you are attempting to do. As I 
> say,  I do not find proof for your position in the GNSO 
> recommendations.  ANd I do not think that an anticipated 
> concern that something might be taken the wrong way can serve 
> as proof of a decision to do it that way.
> 
> a.
> 
> 
> On 16 Apr 2010, at 16:54, Gomes, Chuck wrote:
> 
> > The report speaks for itself Avri as does the DAG in its 
> latest version.
> > I understand that you do not like that; that is why you submitted a 
> > minority statement.
> > 
> > Chuck
> > 
> >> -----Original Message-----
> >> From: owner-gnso-idng@xxxxxxxxx
> >> [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of Avri Doria
> >> Sent: Friday, April 16, 2010 4:18 PM
> >> To: gnso-idng@xxxxxxxxx
> >> Subject: Re: [gnso-idng] reporting back to the council
> >> 
> >> 
> >> hi,
> >> 
> >> And that is the crux of one of our strong  differences of 
> opinion.  
> >> 
> >> I believe that it was never the intent of the GNSO Council 
> to allow 
> >> 'meaning' within the category of 'confusingly similar'.
> >> 
> >> In fact, I believe the GNSO decision was to restrict it to visual 
> >> confusion and I believe the DAG is as well:
> >> 
> >> Standard for String Confusion - String confusion exists where a 
> >> string so nearly resembles another visually that it is likely to 
> >> deceive or cause confusion. For the likelihood of 
> confusion to exist, 
> >> it must be probable, not merely possible that confusion 
> will arise in 
> >> the mind of the average, reasonable Internet user. Mere 
> association, 
> >> in the sense that the string brings another string to mind, is 
> >> insufficient to find a likelihood of confusion.
> >> 
> >> a.
> >> 
> >> On 16 Apr 2010, at 10:35, Gomes, Chuck wrote:
> >> 
> >>> But 'confusing similarity' is not restricted to only visual
> >> confusion
> >>> in the GNSO recommendations.
> >>> 
> >>> Chuck
> >>> 
> >>>> -----Original Message-----
> >>>> From: owner-gnso-idng@xxxxxxxxx
> >>>> [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of Avri Doria
> >>>> Sent: Friday, April 16, 2010 9:04 AM
> >>>> To: gnso-idng@xxxxxxxxx
> >>>> Subject: Re: [gnso-idng] reporting back to the council
> >>>> 
> >>>> 
> >>>> 
> >>>> On 16 Apr 2010, at 08:47, Adrian Kinderis wrote:
> >>>> 
> >>>>> It seems unnecessary and against the original intention.
> >>>> 
> >>>> and as long as 'confusing similarity'  means 'likely to
> >> cause visual
> >>>> confusion,' it won't happen and there will be no problem as was 
> >>>> intended by the council.
> >>>> 
> >>>> a.
> >>>> 
> >>>> 
> >>>> 
> >>>> 
> >> 
> >> 
> >> 
> 
> 
>