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

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

Thank you very much Avri for a very thoughtful and carefully prepared
response. As I think everyone can see by a few additional responses
below, I do not think we are very far apart, if any.

Chuck 

> -----Original Message-----
> From: owner-gnso-idng@xxxxxxxxx 
> [mailto:owner-gnso-idng@xxxxxxxxx] On Behalf Of Avri Doria
> Sent: Wednesday, April 21, 2010 12:26 AM
> To: gnso-idng@xxxxxxxxx
> Subject: Re: [gnso-idng] reporting back to the council
> 
> 
> Hi,
> 
> I am afraid this is much longer then my normal email, and I 
> apologize for that but I have to deal with several issues in 
> this response.  Also I want to note that this is my own 
> opinion and not the opinion of the NCSG.  I am submitting 
> this to the NCSG as well as to this DT and am in the process 
> of kicking off a work effort in the NCSG for us to further 
> consider the issue and create a position paper on the 
> subject.  Given the expertise in the NCSG on Trademark Law, 
> Consumer Protection and Human Rights including Freedom of 
> Expression, I am sure that whatever gets produced will be far 
> more comprehensive then what I am submitting to this group.  
> I have, however, submitted my basic proposition to NCSG 
> review and criticism already and must admit that some may 
> think my position a bit too centrist.
> 
> In this contribution, I need to present my argument on the 
> primacy of the visual aspect in issues in confusing 
> similarity or likelihood to confuse that needs to be resolved 
> by the application process. And I need to account for the 
> other possible aspects related to confusing similarity and  
> likelihood to confuse that need to be resolved by the 
> application process.  Finally I need to (re-)present my views 
> on how I think these should be handled.
> 
> ---
> 
> To start, the GNSO recommendation only mentions possible 
> criteria by which a name can be considered confusing similar 
> or likely to cause confusion but does not build a definitive 
> list of those characteristics.

Chuck: Agree.
  
> 
> So in a sense Chuck is correct when he claims that there is 
> no specific endorsement of visual similarity as the only 
> method to be used, and I believe that in a sense I am correct 
> in stating that there is no specific endorsement of the use 
> of translation as the basis for  confusing similarity or 
> likelihood to confuse.  We are both right, and perhaps I 
> should leave it there.  But I won't.
> 
> There is mention: that 'confusion may be visual, phonetic or 
> conceptual' as well as many other mentions in the background 
> descriptions of how various International statutes consider 
> the issue.  And within those discussions different causes of 
> confusion get different treatment.

Chuck: Agree
  
> 
> My argument is based on the differing treatment that the 
> various possible causes of confusion receive in the examples 
> of confusing similarity and likelihood to confuse.
> 
> 1. Visually confusing serves as a base component of 
> confusingly similarity in all discussions.  Whatever other 
> views they may have about confusingly similarity all of the 
> referenced documents accept that visual confusion is a reason 
> for some string to be designated as confusingly similar to 
> some other string (though of course there are discussions 
> about what it means to be visually confusing - a difficult 
> topic in its own right.)  Among the Trademark documents as I 
> understand it, there is no argument against visually 
> confusing, but there are many qualifications in trademark law 
> as it applies to a wide variety of identifiers, not just 
> domain names, for example that TLDs have no colors, are 
> rarely "pronounced" as words or normal names are pronounced - 
> so a lot of the TM confusing similarity stuff may not apply - 
> but that is for review panels and law courts to decide - not this DT.
> 
> I believe that it is only visual confusion of the character 
> patterns that is accepted as a reason for likelihood of 
> confusion in all discussions.   
> 
> Does anyone argue that visual aspects should not be 
> considered when determining whether a string is confusingly 
> similar?  I think, for the most part, not, and the fact that 
> everyone accepts visual confusion (at least to some degree) 
> as a reason for confusing similarity and the likelihood of 
> confusion,  gives it a special status as the one thing we all 
> agree on - we need to be concerned about those strings that 
> are visually confusing.

Chuck: Whether visual confusion should be given special status or not,
it definitely is a key way in which confusion could occur so I do agree
that it should definitely be evaluated if there is a probability of
confusion.  The fact that two names are visually similar though does not
necessarily mean that there would be user confusion.  Two names could be
visually similar but if they are offered by the same or cooperating
entities in a way that minimizes possible confusion, one of them should
not necessarily be disallowed because of the visual similarity.  Clearly
it is a judgement call.

> 
> I believe this gives the visual aspect a primacy, and though 
> this does not mean that they are the only considerations that 
> need to be considered in the process it does mean that they 
> are reasonably the only aspects that need to be considered 
> for all new gTLD in the initial evaluation.

Chuck: Visual is probably the easiest to check but even that has its
elements of complexity.  I agree that visual similarity should be
checked in all instances but strings should not be eliminated solely on
visual similarity.  As I stated just above, if two visually similar
names are offered in a way to minimize confusion, then even though they
are visually similar, the probability of confusion may be very low. The
key is the probability of confusion, not the visual similarity.

> 
> 2. No other of type of confusingly similarity is agreed upon 
> by everyone.  Various are mentioned as things that have been 
> considered and may considered again.  But none of these has 
> the status of being agreed to by all of the International 
> Legal Instruments.
> 
> E.g.
> 
> > For example, the Committee considered the World Trade 
> Organisation's TRIPS agreement, in particular Article 16 
> which discusses the rights which are conferred to a trademark 
> owner.[44] In particular, the Committee agreed upon an 
> expectation that strings must avoid increasing opportunities 
> for entities or individuals, who operate in bad faith and who 
> wish to defraud consumers. The Committee also considered the 
> Universal Declaration of Human Rights[45] and the 
> International Covenant on Civil and Political Rights which 
> address the "freedom of expression" element of the 
> Committee's deliberations.
> 
> > 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" {Article 10bis (3) (1} and, further, being 
> "liable to mislead the public" {Article 10bis (3) (3)}. The 
> treatment of confusingly similar is also contained in 
> European Union law (currently covering twenty-seven 
> countries) and is structured as follows. "...because of its 
> identity with or similarity to...there exists a likelihood of 
> confusion on the part of the public...; the likelihood of 
> confusion includes the likelihood of association..."
> 
> > Australian Trade Marks Act 1995 Section 10 says that 
> "...For the purposes of this Act, a trade mark is taken to be 
> deceptively similar to another trade mark if it so nearly 
> resembles that other trade mark that it is likely to deceive 
> or cause confusion"
> 
> > For example, 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. A mere visual similarity 
> may create a likelihood of confusion. Confusion is based on 
> the fact that the relevant public does not tend to analyse a 
> word in detail but pays more attention to the distinctive and 
> dominant components. Similarities are more significant than 
> dissimilarities. The visual comparison is based on an 
> analysis of the number and sequence of the letters, the 
> number of words and the structure of the signs. Further 
> particularities may be of relevance, such as the existence of 
> special letters or accents that may be perceived as an 
> indication of a specific language. 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. The length of a name 
> may influence the effect of differences. The shorter a name, 
> the more easily the public is able to perceive all its single 
> elements. Thus, small differences may frequently lead in 
> short words to a different overall impression. In contrast, 
> the public is less aware of differences between long names. 
> The overall phonetic impression is particularly influenced by 
> the number and sequence of syllables."
> 
> That quote mention many different possible ways of looking at 
> and considering the issue in an international context, 
> including issues of good or bad faith, freedom of expression, 
> resemblance, phonetic or conceptual in addition to visual.  
> But at no time did the GNSO council make a definitive list - 
> it referred the problem of determining what the appropriate 
> causes for possible confusion  to the objection review team.

Chuck: Agree.

> 
> Finally in this discussion there has been a presumption that 
> I was the only one who felt tension about the definitions.  
> This is most definitely not the case as expressed in the 
> following.  The reason all of this was left ambiguous is 
> because of this tension.

Chuck: I did not make that presumption.  In fact I believe I quoted the
following as you do and I also stated when giving some history that in
the early stages of the discussion, there were multiple parties who
wanted the definition to be restricted to visual similarity only.  What
I did say, is that you were the only one who submitted a minority
statement in this regard but that should not be interpreteded to mean
that I presume you were the only source of disagreement on this issue
during the PDP process.

> 
> > xvii) There is tension between those on the Committee who 
> are concerned about the protection of existing TLD strings 
> and those concerned with the protection of trademark and 
> other rights as compared to those who wish, as far as 
> possible, to preserve freedom of expression and creativity. 
> The Implementation Plan sets out a series of tests to apply 
> the recommendation during the application evaluation process.
> 
> 
> 3. The Question then becomes how did the GNSO Council propose 
> dealing with the tension and the ambiguity.  As mentioned 
> above, it did not do it by listing a set of possible 
> conditions that would be tested against - except for those 
> discussed in the Implementation Plan - which I cannot find, 
> but remember as being restricted to Visual confusability as 
> was DAGv1 at the time of the Board's approval for 
> implementation.  What was provided was Recommendation 12:
> 
> > 12. Dispute resolution and challenge processes must be 
> established prior to the start of the process.
> 
> I note that this is not specific about challenges regarding 
> confusing similarly, but I do believe there was an 
> expectation that confusing similarity could be challenged.  
> DAGv3 backs this up with:
> 
> > 2.1.1.1 String Similarity Review
> > This review involves a preliminary comparison of each 
> applied-for gTLD 
> > string against existing TLDs and against other applied-for strings. 
> > The objective of this review is to prevent user confusion 
> and loss of 
> > confidence in the DNS.
> > The review is to determine whether the applied-for gTLD 
> string is so 
> > similar to one of the others that it would create a probability of 
> > detrimental user confusion if it were to be delegated into the root 
> > zone. 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.
> > This similarity review will be conducted by an independent String 
> > Similarity Panel.
> 
> This shows that the attribute that will be tested for in the 
> initial evaluation of new gTLDs is Visual confusion,  This 
> corresponds to the special place given to Visual aspects of 
> confusing similarity in all discussions of confusing 
> similarity, i.e. as mentioned above, there is consensus about 
> the need to test for visual confusion.  The consensus of the 
> importance of visual confusion makes it unique among the 
> possible causes of confusion. Whereas there is no consensus 
> about other areas of possible likelihood of confusion except 
> that they are grounds for objection.

Chuck: I agree that the way that Staff chose to implement Recommendation
2 was to first check for visual similarity. That makes practical sense
because it is easier to check than other forms of similarity.  That was
a Staff decision though, not any decision by the Council in its
recommendations.  That said, I am okay with that.  You recognize the key
point: other possible areas of confusion are grounds for objection.  I
understand and accept that.
 
> 
> 
> > 3.1.1 Grounds for Objection
> > An objection may be filed on any one of the following four
> > grounds:
> 
> > String Confusion Objection - The applied-for gTLD string is 
> > confusingly similar to an existing TLD or to another 
> appliedfor gTLD 
> > string in the same round of applications.
> 
> 
> and in
> 
> > 3.1.2 Standing to Object
> 
> > String confusion     Existing TLD operator or gTLD applicant in
> > current round
> > 
> 
> 4.  This brings me to my conclusion: that while visual 
> confusing similarity is included in the initial evaluation 
> and every application is subject to that, any other form of 
> possible likelihood to cause confusion must be declared in an 
> objection and then will be adjudicated by the Review Panel 
> according to relevant International law in relation to that 
> particular gTLD.  So while it is ok for a Registry to 
> consider whether it will make a objection based on 
> translation or meaning, until such time as they make such a 
> objection and it is approved by the Review Panel, it is not, 
> properly speaking, a criteria for confusing similarity, it is 
> just a possibility that may be considered by a Review Panel. 
> And even after that it would still not be a criteria for any 
> other gTLD until the relevant Registry had filed its own 
> objection etc.

Chuck: I won't go so far to say that visual similarity by itself is a
criterion that necessarily causes confusion.  But I will say that if
visual similarity exists, then it should then be determined whether the
probability of confusion exists.  It may in some cases and others not.
In the same way, for other possible sources of confusion beyond visual
similarity, the ultimate question that must be answered is whether the
probability of confusion exists.  So they are not that different in that
regard.

> 
> 5. What I have said about this during the course of this 
> Drafting Team. 
> 
> Dec 11: -
> 
> >  i believe that we should just be stating the problem and 
> not a solution.

Chuck: Not sure I agree here but I could live with it and defer the
decision to the Council if we on the DT cannot reach strong agreement.
 
> 
> Dec 12: 
> 
> > Which says to me that it is a complex issue, but that 
> visual similarity is the predominant factor in determining 
> confusion.  And only in cases where you can expect the a 
> person to know both languages would meaning enter into the 
> issue as a complicating factor.  Likewise for phonetic comparisons.
> > 
> > So yes, confusion is the key.

Chuck: Agree.

> > 
> > Most can be eliminated based on visual confusion.
> > 
> > And for the others where there really is a complicating 
> factor that may cause confusion, then and only then does 
> phonetics and meaning come in - and it comes in at the 
> challenge level.

Chuck: I agree that it comes in at the challenge level.

> 
> Dec 15: 
> 
> > My problem with your re-write is that it presupposes that 
> translation is a primary cause for 'confusingly similar'  and 
> as I and others have argued, this is not universally accepted 
> (though I do accept meaning as a possible complicating factor 
> in an objection, I am not sure others even go that far).

Chuck: Not sure what "re-write" you are referring to.  Did I ever say
that "translation is a primary cause for 'confusingly similar'".  I
don't think so.

> 
> > by lowest common denominator i meant the kind of similarity 
> we can all agree would be included in the category 
> 'confusingly similar'.

Chuck: If by LCD we mean easiest to check for, I agree.  But if we mean
that visual similarity automatically means there is a probability of
confusion, then I disagree.  Visual similarity, just like any other
areas of similarity, needs to be evaluated in a broader context that
considers other factors besides just the visual similarity.  Do those
other factors mitigate the chances of confusion?  If so, the visual
similarity is probably not a problem.

> 
> (though i was berated for not understanding my maths well 
> enough to know what lowest common denominator really meant)

Chuck: Did something I said come across as berating you.  I hope not.

> 
> ... (many similar comments )...
> 
> 16 April
> 
> >  Certainly various issues are discussed, but there is no 
> statement of a council decision for confusing similarity to 
> be more the visual.

Chuck: Nor is there any statement that confusing similarity is
restricted to visual.
 
> 
> As I said a lot was discussed but no decision was ever made 
> to include more.  The point is made in the discussion of 
> recommendation 2 in the  GNSO Recommendation: 

Chuck: Nor was any decision made to restrict confusing similarity to
visual.  Instead we provided a discussion about the topic.
 
> 
> > There is tension between those on the Committee who are 
> concerned about the protection of existing TLD strings and 
> those concerned with the protection of trademark and other 
> rights as compared to those who wish, as far as possible, to 
> preserve freedom of expression and creativity. The 
> Implementation Plan sets out a series of tests to apply the 
> recommendation during the application evaluation process.
> 
> It is this tension that we are still expressing in this debate.
> 
> 16 April
> 
> > I believe that it was never the intent of the GNSO Council 
> to allow 'meaning' within the category of 'confusingly similar'.

Chuck: I can tell you that it was the intent of some members of the
Council.  Was it unanimous?  No.
  
> 
> This is strong, yet I stand by it.  While there as the 
> intention of the council to allow those with standing to 
> object on any ground for which they could find a basis, 
> including meaning, there was never a specific GNSO council 
> decision to specifically include meaning as a specific 
> element that would be tested for.  I.e I argue that it does 
> not have the consensus status of visual likelihood of confusion.

Chuck: Where is the consensus statement on visual likelihood of
confusion being the only way?

> 
> 6. How this related to the issue of the IDNG DT.
> 
> The issue we were discussing was whether a registry who had 
> (or was applying for) a LDH ASCII gTLD would be able to apply 
> for a name that would be considered confusing similar if 
> others applied for it.  I agued that this is complicated by 
> several factors.  Among those factors:
> 
> - Is this based on an initial evaluation visual likelihood to 
> cause confusion or another objection based likelihood to 
> cause confusion.
> 
> In the case of something failing the initial evaluation, I 
> felt that this should be taken care of in extended 
> evaluation.  I later realized that  in DAGv3 Extended 
> evaluation is not available for issues related to String 
> Similarity.  So this is a problem that needs to be dealt with 
> if the council wishes to allow the option of the same 
> registry controlling visually similar strings that could 
> cause confusion. So I supported, and support, a minimal 
> report to the Council  that in the case of visual confusing 
> similarity perhaps it should be possible to request an 
> extended evaluation were a Registry can request the visually 
> similar IDN gTLD based on their ownership of the LDH ASCII.  
> 
> In the case of a name that might be considered confusingly 
> similar based on something like aural evaluation (i.e. 
> transliteration) or translation I did not see a problem.  
> Since these criteria are only taken into account when someone 
> with standing objects on that basis and I would not expect 
> the registry to object to its own application for being 
> confusingly similar based on meaning.  I figured the chance 
> of that was rare - unless of course it was a question of a 
> translation for 'commerce' or 'business' claimed by both com 
> and biz - who would both have standing.
> 
> - In discussing two TLDs that are visually similar a likely 
> to cause confusion, the council needs to determine what this 
> means in terms of issues of confusion at the second level and 
> the subject of TLD synchronicity.  While they may decide that 
> this needs some policy considerations I am not trying to 
> predetermine the result of that discussion - only saying that 
> the the discussion has to happen before any decision is made 
> on how to handle these situations.
> 
> 
> 7. My proposed solution to this disagreement in the DT is 
> that I am willing to quit saying the Visual confusing 
> similarity is the only possible criteria for determining 
> likelihood of confusion if others will refrain from saying 
> that reasons such as translation have been included in the 
> GNSO's recommendations as more then possible reasons for 
> objection.  I do believe we can write a report that steers 
> carefully between the Scylla and Charybdis of this debate.   
> What I recommended is that we present the council with an 
> adequate description of this complex problem in careful words 
> that make neither of the parties in this debate or others in 
> the group uncomfortable. And we make recommendations about 
> further work the council may consider within its work 
> prioritization model if we so wish. 

Chuck: We should be able to work on this.
   
> 
> 
> thanks
> a.
> 
> 
> 
> 
>