Institute for Internet Policy & Law

Three critical reasons against the string comparison as proposed by the IRT
a) It subverts the bottom-up consensus of the new gTLD process.
String confusion issue was firstly researched by the GNSO IDN WG, which eventually stated that string confusion should be limited to visual similiarity. This is confirmed by the GNSO document to the Board. Although the gTLD guidebook is ambiguous on string confusion, which only says that any string should not inflict “user confusion”, the IRT proposal should not betray the community consensus by stretching it to “meaningful” confusion.
b) It is legally baseless.
No international law allows for trademark protection in translated form except for well-known marks. The string confusion extending to commerical impression (meaningful similarity) is equivalent to create additional protection indiscrimatively for all the marks, which is not acceptedly internationally.
c) It breaches free speech.
No trademark owner owns the meaning of a trademark, let alone the meaning in any script or language. A cross-script monopoly for words or “meaning” of a trademark is obvously not the intent of the new gTLD program.

Unreasonableness of IP Clearing House

It is a sham for uniform mandatory sunrise imposed on indiscriminately on all the potential new gTLD operators. This mandatory uniform sunrise approach can easily be gamed. Look at the thousands of trademarks registered in preparation for the new gTLDs. I can see hundreds of “.music” trademarks in various territories that can be searched and verified, not Tunisian registrations, but why should they be prioritized? I really want to know if such “clearing” covers the translation of a federally registered trademark or limited to the original mark string per se. If it were the first case, it would almost become a death sentence to IDNs (thinking about the trademark flooding to game the clearing house!).

Drafted by Dr. Hong Xue on behalf of CDNUA, At-Large@China and ISOC-Australia
This document is consistent with the statements and advices made by the ALAC and At-Large Community to the ICANN Board and that it is reflective of the views of many ALSes within the Asia Pacific Region and that it is expected to gain support of the APRALO as a formal Statement at our next meeting on the 28th of July. We also get the support from the other organizations/ key stakeholders in this Region.
A majority of Asians are non-ASCII users. The implementation of IDN TLDs is essentially important in Asia. However, we have concern that the IRT proposals, particularly the additional “meaning” (commercial impression) criterion, would negatively impact the IDN TLD applicants. Since this criterion has never been applied to the existing ASCII TLDs- for instance .biz was not precluded for being “meaningfully or semantically similar” to .com, ICANN should not impose the double standards to the IDN TLDs merely for the protection of interests of one stakeholder group. We strongly affirm that evaluation of string confusion must be restricted to visual similarity, and not be inappropriately enhanced to include “aural or meaning (“commercial impression”)”, which is very subjective and would open the door to endless disputes.
With respect to GPM, we concern the proposal that “the confusing similarity analysis of applied-for gTLD strings against GPMs include the aural and commercial impression (meaning) of the applied-for string in addition to the visual similarity” would unreasonably prejudice the IDN TLD applicants. Legal protection of a trademark in translation or transliteration must be subject to the complicated legal analysis and judgment based on special law in the respective territory. ICANN has neither the authority nor capacity to do this in the Initial Evaluation process. If taken into account those famous marks that consist of generic terms, the IRT proposal would seem absurd. Why should a trademark such as “BOSS”, “DOVE” or “VOGUE” bar the Chinese-character TLDs like “.老板”、“.鸽子”or “.时尚”?
In contrast to the trademarks that have been singled out as an overarching issue for new gTLD implementation, we concern that the other legal issues that are protected by the international treaties, such as non-trademark “traditional knowledge”, would be unreasonably ignored or push aside.
We reiterate the concerns that have been expressed in various circumstances by the at-large communities that ICANN should not engage in any trademark protection regime which extends beyond existing international intellectual property treaties and the inherent legal limitations on the trademark rights.