RE: [council] Response to ccNSO/GAC Issues report

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

Robin,
 
Note that in the case of domain names, the domain names are the products
so 'the confusion as to the origin of the respective products' means
'confusion as to the origin of the domain name'.
 
Chuck

________________________________

From: owner-council@xxxxxxxxxxxxxx [mailto:owner-council@xxxxxxxxxxxxxx]
On Behalf Of Robin Gross
Sent: Tuesday, February 12, 2008 4:00 AM
To: Mike Rodenbaugh; Council GNSO
Subject: Re: [council] Response to ccNSO/GAC Issues report


Hi Mike,

Actually, the UDRP makes my case: registrations are PERMITTED and only
taken away AFTER-THE-FACT, when wrong doing has been shown.   

The point is not about "activation", but rather "registration".   Sure,
you can establish bad faith after a registration but before activation
based on the facts and circumstances of the situation (registering a
domain that includes a TM and then sending a letter to the TM owner
saying if they want it they gotta pay you big bucks to get it).   But it
is still a USE based analysis, not something that can be determined
before registration in order to deny a registration.

Remember the Taubman v. Webfeats
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=6th&navby=docket
&no=03a0043p>  case [319 F.3d 770 (6th Cir. 2003)]:


"If [defendant's] use is commercial, then, and only then, do we analyze
his use for a likelihood of confusion."   The court continues: "Even if
[defendant's] use is commercial speech, i.e., "in connection with the
sale . . . or advertising of any goods or services," and within the
jurisdiction of the Lanham Act, there is a violation only if his use
also creates a likelihood of confusion among customers. 15 U.S.C.
1114(1).  Moreover, the only important question is whether there is a
likelihood of confusion between the parties' goods or services. Bird v.
Parsons, 289 F.3d 865, 877 (6th Cir. 2002).  Under Lanham Act
jurisprudence, it is irrelevant whether customers would be confused as
to the origin of the websites, unless there is confusion as to the
origin of the respective products. See also Daddy's Junky Music Stores,
109 F.3d at 280."

This is just the first case that comes to mind.  Briefly, here is
another:  Cline v. 1-888-PLUMBING, 146 F. Supp. 2d 351 (S.D.N.Y. 2001).
The court held that merely registering a domain name likely to be
confused with a registered trademark was not enough to infringe upon the
mark, as it was not a "use in commerce" of the mark. "In the context of
domain names, parties encroach on a registrant's rights under [...] the
Lanham Act not when they reserve a domain name [...] but when they use
it." Id. at 369.

**** THEREFORE, I propose that we amend our statement, so that only
"technical confusion" is the type of confusion that we deal with.
Otherwise, not only are we in contrast with legal norms, we are also
outside the scope of ICANN's authority.

Thank you,  Robin


On Feb 11, 2008, at 4:54 AM, Mike Rodenbaugh wrote:


        
        There are plenty of UDRP decisions holding that domain names can
be registered in bad faith, even if not activated.  The fact the domain
is registered in effort to extract money from TM owner, and/or deprives
TM owner of ability to use the name, is enough.  I am pretty certain
there are also US court precedents on that point at least as well, and
would bet they exist in other jurisdictions at this point too.  So, with
respect, I think Professor Farley is incorrect.  ICANN's scope of
authority includes mitigation of likelihood of consumer confusion in any
sense, that was settled with enactment and entrenchment of the UDRP as a
purported remedy.
        
        Interested to hear more about the font idea, as I don't
immediately see how that will help.
        
        Thanks,
        Mike
        
        From: owner-council@xxxxxxxxxxxxxx
[mailto:owner-council@xxxxxxxxxxxxxx] On Behalf Of Robin Gross
        Sent: Monday, February 11, 2008 4:36 AM
        To: Chuck Gomes
        Cc: Council GNSO
        Subject: Re: [council] Response to ccNSO/GAC Issues report
        Chuck,
        I agree with you that trademarks are only a subset of
"confusingly similar".  The point is that trademarks are outside of the
realm of technical confusion, and only technical confusion should be
included within the "confusingly similar" issue since that is all that
is within ICANN's scope of authority.   
        I disagree that international law says that domain names,
without any analysis of their use, can be considered confusingly
similar.  Please remember the presentation that Professor Christine
Haight Farley, American University international trademark law expert,
gave to us in San Juan, where she attempted to explain this key point in
detail.  
          Her paper is online at:
http://ipjustice.org/wp/2007/06/06/farley-legal-briefing/
          and the video of her presentation is at:
http://www.keep-the-core-neutral.org/node/31
        It is a mistake for us to continue to expand trademark rights in
domain names beyond the scope of rights that trademark law grants.   So
I can't support a GNSO position that does this.
        Another suggestion that was provided at our dinner table last
night was that a better way to deal with confusion caused by similar
script characters (such as the "paypal example")  is by the creation of
new FONTS that make the characters more distinct and thus eliminate this
type of confusion through a software fix (rather than by expanding
trademark rights).  I agree that we should explore this approach.
        Thanks,
        Robin
        On Feb 11, 2008, at 4:00 AM, Gomes, Chuck wrote:


        Recommendation 2 (confusingly similar) does not necessarily
relate to trademarks although that could be a subset.  The detailed
discussion we included for this was taken from international law
relating to trademarks but the intent was to apply the requirement on
broader basis, in particularly for existing gTLDs that do not have any
trade mark rights.
        Chuck
________________________________

        From: owner-council@xxxxxxxxxxxxxx
[mailto:owner-council@xxxxxxxxxxxxxx] On Behalf Of Robin Gross
        Sent: Monday, February 11, 2008 12:50 AM
        To: Council GNSO
        Subject: Re: [council] Response to ccNSO/GAC Issues report
        The same issue was raised at my table by the board members.  The
feeling was "if two countries are going to start a war over a domain
name, that is their problem.  They must pick 1 name."  I think there is
merit to this view.    It was also mentioned that Chinese is a script
that is used by a large community in just about EVERY country in the
world, so does this mean every country gets a script in Chinese?    In
the US alone, there are large language communities for probably 10
scripts, giving the US 10 scripts under our rule.   I do not believe
this is what we intended.
        And a few other points were raised that need to be dealt with.
In particular, the recommendation that "strings must not be confusingly
similar" is misplaced.  Only technical confusion is the type that should
be dealt with here, not general confusion.  I agree.  This
recommendation really does not make sense from a trademark viewpoint
(although that is how it is intended), since a domain name, by itself,
does not cause confusion, but only with relation to how the domain is
used.    We are going well beyond technical stability and trying to
regulate other things that are outside ICANN's authority.
        Perhaps we should give more thought to our recommendations
before we vote on them.    I found the feedback from the board to be
enormously useful and we should try to address their concerns before
voting.
        Thanks,
        Robin
        On Feb 10, 2008, at 7:39 PM, Norbert Klein wrote:


        I also agree with Avri's suggestion, where others already
consented.
        At the table I was - and I later talking to people from another
table - there 
        was opposition to the "One IDNccTLD per one script per one
language 
        group": "their government should decide to choose just one."
        I was surprised about the lack of sensitivity on the
political/social/cultural 
        implications. I argued - as a example - saying that it would be
highly 
        destructive in the presently tense situation, if the Malaysian
government 
        would give preference to the Chinese over against the Indian
ethnic sections 
        of the society by allocating only one IDNccTLD, but this was
dismissed 
        as "not ICANN's problem."
        Norbert
        -
        ----------  Forwarded Message  ----------
        Subject: RE: [council] Response to ccNSO/GAC Issues report
        Date: Monday, 11 February 2008
        From: "Edmon Chung" <edmon@xxxxxxxxxxx>
        To: "'Council GNSO'" <council@xxxxxxxxxxxxxx>
        Agreed.
        Edmon

                -----Original Message-----
                From: owner-council@xxxxxxxxxxxxxx
[mailto:owner-council@xxxxxxxxxxxxxx] On
                Behalf Of Adrian Kinderis
                Sent: Monday, February 11, 2008 10:11 AM
                To: Avri Doria; Council GNSO
                Subject: RE: [council] Response to ccNSO/GAC Issues
report
                The same issue was raised at our table Avri.
                I believe your suggested change would be appropriate.
                Regards,
                Adrian Kinderis

        -- 
        If you want to know what is going on in Cambodia,
        please visit us regularly - you can find something new every
day:
        http://cambodiamirror.wordpress.com 
        Agreed.
        Edmon

                -----Original Message-----
                From: owner-council@xxxxxxxxxxxxxx
[mailto:owner-council@xxxxxxxxxxxxxx] On
                Behalf Of Adrian Kinderis
                Sent: Monday, February 11, 2008 10:11 AM
                To: Avri Doria; Council GNSO
                Subject: RE: [council] Response to ccNSO/GAC Issues
report
                The same issue was raised at our table Avri.
                I believe your suggested change would be appropriate.
                Regards,
                Adrian Kinderis
                Managing Director
                AusRegistry Group Pty Ltd
                Level 8, 10 Queens Road
                Melbourne. Victoria Australia. 3004
                Ph: +61 3 9866 3710
                Fax: +61 3 9866 1970
                Email: adrian@xxxxxxxxxxxxxxx
                Web: www.ausregistrygroup.com
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                -----Original Message-----
                From: owner-council@xxxxxxxxxxxxxx
[mailto:owner-council@xxxxxxxxxxxxxx]
                On Behalf Of Avri Doria
                Sent: Monday, 11 February 2008 12:59 PM
                To: Council GNSO
                Subject: [council] Response to ccNSO/GAC Issues report
                Hi,
                At my table this evening, we had a conversation about
Executive
                summary point #5 - specifically the last phrase "...
without GNSO's
                concurrence"
                While explaning it this, I explained that it really
refered to the
                need to have have resolved the issue as explained in #2
and the ICANn
                community had  achieved a common agreement of an interim
procedure.
                I am wondering whether we might be to change it to say:
" without
                prior community concurrence"
                thanks
                a.

        
        
        IP JUSTICE
        Robin Gross, Executive Director
        1192 Haight Street, San Francisco, CA  94117  USA
        p: +1-415-553-6261    f: +1-415-462-6451
        w: http://www.ipjustice.org     e: robin@xxxxxxxxxxxxx
        
        
        
        
        
        IP JUSTICE
        Robin Gross, Executive Director
        1192 Haight Street, San Francisco, CA  94117  USA
        p: +1-415-553-6261    f: +1-415-462-6451
        w: http://www.ipjustice.org     e: robin@xxxxxxxxxxxxx
        
        
        





IP JUSTICE
Robin Gross, Executive Director
1192 Haight Street, San Francisco, CA  94117  USA
p: +1-415-553-6261    f: +1-415-462-6451
w: http://www.ipjustice.org     e: robin@xxxxxxxxxxxxx