Domain Names are Bigger than Trademarks: ICANN’s New Consumer Protection Role

[1], as it presently states that “confusingly similar strings must be avoided.”

This wording was previously used by the GNSO Council at its “Policy recommendations and implementation guidelines for the introduction of new top-level domains”.[2] At the final draft report, Recommendation no. 02 states that: “Strings must not be confusingly similar to an existing top-level domain.” For reference purposes, a footnote relates the “confusingly similar” expression with item 4(a) of the UDRP.[3]

We object to the adoption of the misleading wording “confusingly similar” in the GNSO Comments, grounded in the following arguments:

1.  Expansion of trademark rights to a broader field of elements

In adopting the “confusingly similar” expression, as it is used by item 4(a) of the UDRP, the GNSO Comments expand the trademark logic of protection to a wider range of elements, especially in what concerns with domain names and the way countries can refer to themselves through domain names.

In adopting this kind of wording, the GNSO Comments would be equating domain names with trademarks as properties that could be legally protectable. Such expansion of trademark logics to other elements, such as domain names, not only broader the scope of ICANN authority, as addressed bellow, but also is incorrect in legal terms.

In her “Legal Briefing Paper on GNSO Recommendations for Domain Name Policy”, American University Law Professor Christine Haight Farley stated that “trademarks are legally protected intellectual property because it is believed that the commercial use of a mark by another that is likely to cause confusion would injure consumers.  Trademarks are legally protectable intellectual property also because their owners have developed valuable goodwill in the marks.  Neither of these conditions of legal protection apply in the case of domain names.”[4]

Non-commercial users of domain names will be unfairly discouraged from using trademarks.  Even though a trademark law analysis would permit a broad range of confusingly similar domain names that are used for non-commercial purposes, the GNSO’s recommendation would not.

Perhaps a better policy choice might be to look to the private sector and open source software developers to create new software that can better prevent confusion caused by similar words, such as new fonts.

2.  Only technical issues within scope of ICANN authority

In maintaining the “confusingly similar” expression at item 10 of its Executive Report, the GNSO Comments do not narrow the scope of ICANN authority to deal with cases related to technical confusion. On the contrary, it empowers ICANN to act in fields that it does not have adequate authority to decide upon, as the adequate ways through which a country or community can designate themselves.

As the GNSO Comments address domain names, it is important to highlight that a domain name, by itself, does not cause confusion, but only with relation to how the domain is used. In maintaining the general confusion wording the GNSO Comments surpass the concept of technical stability and seems to end up regulating other fields of expression and consumer protection that are outside ICANN´s authority.

3.  “Confusion similarity” and “likelihood of confusion”

There is also another issue of concern regarding the definition of what could be considered as “confusingly similar” strings. In her “Legal Briefing Paper on GNSO Recommendations for Domain Name Policy”, Law Professor Christine Haight Farley has addressed this topic, stating that “confusing similarity” and “likelihood of confusion” are two different concepts.[5]  As mentioned in her Legal Briefing:

“A determination about whether use of a mark by another is “confusingly similar” is simply a first step in the analysis of infringement.  As the committee correctly notes, account will be taken of visual, phonetic and conceptual similarity.  But this determination does not end the analysis.  Delta Dental and Delta Airlines are confusingly similar, but are not likely to cause confusion, and therefore do not infringe.  As U.S. trademark law clearly sets out, the standard for infringement is where the use of a mark is such “as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive…”   While it may be that most cases of confusing similarity are likely to cause confusion, because the infringement standard takes account of how the mark is used, some cases of confusing similarity will not likely cause confusion.”

(…) “In trademark law, where there is confusing similarity and the mark is used on similar goods or services, a likelihood of confusion will usually be found.  European trademark law recognizes this point perhaps more readily than U.S. trademark law.  As a result, sometimes “confusingly similar” is used as shorthand for “likelihood of confusion.”  However, these concepts must remain distinct in domain name policy where there is no opportunity to consider how the mark is being used.  As applied to domain names, the only level of analysis is the first level of analysis: confusing similarity.”

For the above reasons, we are unsupportive of the current wording of item 10 of the Executive Summary of the GNSO Comments in Response to the ccNSO-GAC Issues Report on IDN Issues.  This concern also relates to the wording used in GNSO’s new gTLD policy recommendations (ASCI) regarding the introduction of new domain names for “confusingly similar”. 

The terminology “confusingly similar” lends itself to the expansion of trademark rights to domain names by commercial uses and governments to the disadvantage of non-commercial users.  ICANN should refrain from taking on consumer protection type roles (such as preventing “confusion” in people) and only regulate issues related to the technical coordination of the Domain Name System.