Fi-domain name similar to a protected name or trademark

Under domain name legislation, a derivative of a protected name or trademark means an fi-domain name that is similar to a protected name or trademark owned by another party without being identical to it.

If a registered fi-domain name is similar to a protected name or trademark owned by another party, the domain name may be removed from the register only if the fi-domain name has been registered with the clear intent to benefit from it or to cause damage.

For more information about assessing the clear intent to benefit or to cause damage, visit Intent to benefit or cause damage.

An fi-domain name may differ from a protected name or trademark, for example, by one letter only. Examples of fi-domain names that are similar to a protected name or trademark:

  • cats.fi is similar to the trademark CAT
  • house.fi is similar to the business name House Factory Ltd
  • buildingmaterials.fi is similar to the auxiliary business name Helsinki Building Materials Ky

Figurative mark

If an fi-domain name consists of the textual part of a figurative mark, in FICORA's decision-making practice it is usually considered to be a derivative of the figurative mark. The characteristics of a figurative mark, such as pictures, fonts or colours cannot usually be included in a domain name consisting of text only. Therefore, the figurative mark and the fi-domain name cannot be considered to be identical in general.

Therefore, in principle, a word mark is better protected than a figurative mark in relation to domain names. The less the figurative mark differs from a domain name, the better the protection of the trademark. This principle has been established in the decisions of the Helsinki Administrative Court.

Typosquatted fi-domain names

FICORA considers that misspelled domain names which instantly reveal which protected name or trademark they are based on are derivatives of such names or trademarks. FICORA's decision-making practice shows that these domain names are usually registered with the intent to benefit or cause damage.

In FICORA's view, it is unlikely that a domain name similar to a protected name or trademark owned by another party would, by coincidence, consist of a selected chain of letters which mean nothing. The intentional mistakes in the spelling of domain names are often located in such positions in the word where people tend to misspell. Typosquatters register such domain names with the obvious intent to lure misspelling persons to their website even though these persons actually try to visit the website of the protected name or trademark.

FICORA's decisions are always based on case-specific consideration. If a domain name holder has applied for several domain names that are derivatives of a protected name or trademark, FICORA may remove the domain names temporarily from the root fi.

Name or trademark similar to a domain name or website address

If the spelling of a name or trademark registered to a party requesting removal is similar to a domain name, it is considered to be a derivative of such domain name in FICORA’s decision-making practice. For example

  • registered auxiliary business name www.example.fi
  • registered business name "Example.fi Oy".

A name or trademark registered with the Finnish Patent and Registration Office, the spelling of which is similar to an fi-domain name or website address, is protected as a whole. A similar combination cannot be registered as a domain name ending with .fi, because a domain name cannot contain a dot. An fi-domain name may only contain letters or numbers and hyphens (hyphen-minus).

Therefore, the above-mentioned registered business name “Example.fi Oy" and domain name “example.fi" are not identical. However, business name Example Oy (without .fi forming a part of the name) and domain name example.fi are identical.

Key words: Internet , Domain names

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