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@gnso.icann.org [mailto:owner-council@gnso.icann.org] 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 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@gnso.icann.org [mailto:owner-council@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.  
  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@gnso.icann.org [mailto:owner-council@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@dotasia.org>
To: "'Council GNSO'" <council@gnso.icann.org>
Agreed.
Edmon
-----Original Message-----
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:
Agreed.
Edmon
-----Original Message-----
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
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-----Original Message-----
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


IP JUSTICE
Robin Gross, Executive Director
1192 Haight Street, San Francisco, CA  94117  USA
p: +1-415-553-6261    f: +1-415-462-6451






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@ipjustice.org