Protected name or trademark must not be violated
The Information Society Code provides that at the time of registration, a domain name shall not be
- based on a protected name or trademark owned by another party, unless the domain name holder can present a good, acceptable reason for registering the domain name
- similar to a protected name or trademark owned by another party, if the clear intent of registering the domain name is to benefit from it or to cause damage.
Protected names and trademarks include:
- names or trademarks that have been entered into the trade register or into the registers of trademarks, associations, foundations, or political parties in Finland
- trademarks entered into the trademark register of the European Union Intellectual Property Office (EUIPO)
- name of public body or its bodies
- established names, secondary marks or trademarks referred to in the Business Names Act or Trademarks Act.
Under the new domain name legislation, the combination of the first and last name of a natural person is no longer protected. A name that has been registered as a trademark or a business name before the registration of the domain name may be eligible for protection.
FICORA recommends the parties to take their disputes related to established names or trademarks first to the Market Court, and only after that, if necessary, to claim the fi-domain name to be removed from the register on the basis of a final prohibition decision issued by a court.
FICORA's decision-making practice takes a reserved view of removal claims where the claiming party considers that its business name or trademark has been established before the registration of the fi-domain name.
An unregistered name or trademark may be a ground for removal only if it is unquestionably established. The established status must be so obvious that FICORA may, without any clarifications, find that the name or trademark is established.
FICORA is not able to evaluate extensive legal evidence relating to trademarks. It can only consider cases where the established name or trademark is exceptionally well known.