[council] Response to ccNSO/GAC Issues report

Tue Feb 12 08:59:31 UTC 2008

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 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 at gnso.icann.org [mailto:owner- 
> council at gnso.icann.org] 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 at gnso.icann.org [mailto:owner- 
> council at gnso.icann.org] 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 at dotasia.org>
> To: "'Council GNSO'" <council at gnso.icann.org>
>
>
> Agreed.
> Edmon
>
>
> -----Original Message-----
> From: owner-council at gnso.icann.org [mailto:owner- 
> council at gnso.icann.org] 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 at gnso.icann.org [mailto:owner- 
> council at gnso.icann.org] 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 at ausregistry.com
> Web: www.ausregistrygroup.com
>
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>
> -----Original Message-----
> From: owner-council at gnso.icann.org [mailto:owner- 
> council at gnso.icann.org]
> 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 at ipjustice.org
>
>
>
>
>
>
> 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 at ipjustice.org
>
>
>

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 at ipjustice.org

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