Decision-making practice in removal claims

It is possible to distinguish certain established decision-making practices from FICORA's decisions. It is recommended to examine them before filing a removal claim. There are also several guidelines regarding domain names in case law of the higher courts.

Legislation and lines of interpretation relating to fi-domain name disputes have been long established. Disputes concerning protected names and trademarks and related decisions may be divided into two categories. The fi-domain name subject to the dispute may either be

  • based on a name or trademark registered by another party, or
  • similar to a name or trademark registered by another party.

Time priority rule in the Information Society Code

The protection of registered names and trademarks begins once the registration application has become pending and no changes are made to it later. Domain name legislation protects such names and trademarks, the protection of which has begun before the registration of the fi-domain name.

In accordance with the decision of the Market Court (MAO:585/16, in Finnish) the priority dates based on trademark legislation are taken into consideration when deciding revocation claims of fi-domain names. The protection of an international trademark accepted in the EU or Finland begins once the original trademark registration application submitted in a foreign country has become pending, i.e. from the accepted priority date. This means that the party applying for an fi-domain name cannot necessarily establish conclusively all such trademarks in different trademark registers which could be used as grounds for a future removal claim.

If the protection of a name or trademark begins only after the registration of the fi-domain name, the domain name does not violate the name or trademark at the time of registration. In accordance with the time priority rule, if a removal claim is based on a protected name or trademark that has become protected after the registration of the domain name, the claim will be rejected.

First-come, first-served principle

If both the party requesting removal and the holder that has registered the domain name have the right to the same fi-domain name, the decision will be made in the favour of the party that has registered the domain name first. Such a case may arise, for example, if the same trademark has been registered for both, but in different trademark classes.

Key words: Internet , Domain names

Updated 14.11.2016

LinkedIn Print