Copyright © 2016 Eversheds Attorneys Ltd. | New Rules on Domain Names – National and Regional Systems Conflicts Involving Trademarks - Finland 21 June 2016 Kati Rantala Specialist Counsel, Attorney at Law, Trademark Attorney

Copyright © 2016 Eversheds Attorneys Ltd. | General

Copyright © 2016 Eversheds Attorneys Ltd. | Domain Name Legislation in Finland −In Finland domain names are governed by law and administrated by an authority −Applicable law: The Domain Name Act until 4 September 2016 The Information Society Code from 5 September 2016 onwards −Finnish domain name legislation applies to country code fi region code ax

Copyright © 2016 Eversheds Attorneys Ltd. | −Finnish Communications Regulatory Authority (FICORA) is responsible for domain name administration in Finland −FICORA supervises that domain name legislation is observed −FICORA maintains the domain name register into which domain names are entered −FICORA handles the dispute settlements Domain Name Administration in Finland

Copyright © 2016 Eversheds Attorneys Ltd. | −Domain name holders must have a domain name registrar −Registrars will provide all services related to domain names −Domain names must be registered in their actual holder’s name −Restrictions on applicant’s place of residence and age will be removed What Will Change? New Rules on Domain Names

Copyright © 2016 Eversheds Attorneys Ltd. | −Local presence is no longer required in Finland −Some restrictions regarding the content of the domain names removed −FICORA may react to typosquatting quickly −Domain names may be stored for the purpose of redelivery What Will Change? New Rules on Domain Names

Copyright © 2016 Eversheds Attorneys Ltd. | Conflicts between Domain Names and Trademarks

Copyright © 2016 Eversheds Attorneys Ltd. | −At the time of registration, a domain name shall not be: 1) based on a trademark owned by another party, unless the domain name holder can present a good, acceptable reason for registering the domain name; or 2) similar to a trademark owned by another party, if the clear intent of registering the domain name is to benefit from it or to cause damage Trademark Protection under Finnish Domain Name Legislation

Copyright © 2016 Eversheds Attorneys Ltd. | −FICORA may remove a domain name from the register and the root fi and register it in the name of the holder of the trademark if the domain name was entered into register in violation of the Act (“based on” or “similar”) −FICORA may also remove a domain name from the register if a court has issued a res judicata decision forbidding the use of the domain −No advance control or post- monitoring Removal of a Domain Name

Copyright © 2016 Eversheds Attorneys Ltd. | −Free of charge −Written administrative procedure −Limited possibilities of assessing the evidence −Procedure is meant to provide fast and cost-efficient means to intervene in obvious violations of trademarks −No legal costs Removal Procedure in FICORA

Copyright © 2016 Eversheds Attorneys Ltd. | −During the removal procedure:  Domain name “frozen”  Domain name normally in use  Written statements from the parties −After the decision has been issued:  Decision of FICORA can be appealed to the Market Court  Thereafter possibly to the Supreme Administrative Court Removal Procedure in FICORA

Copyright © 2016 Eversheds Attorneys Ltd. | Trademarks in Removal Procedure

Copyright © 2016 Eversheds Attorneys Ltd. | −Removal claims concerning the violations of trademarks can be divided into two categories:  Cases concerning a domain name that is an exact match of a trademark (“Based on a trademark”)  Cases where the domain name differs from a trademark (“similar to a trademark”) Trademarks in Removal Procedure

Copyright © 2016 Eversheds Attorneys Ltd. | −Domain name is an exact match Domain name identical with a word mark Identical even if trade name contains a symbol for an organisation (twin.fi = Twin Oy) (Oy = Ltd) Identical even if space or hyphen in the trademark (twowords.fi = Two Words / Two-Words) Identical even if native language characters (ÅÄÖ=OAA) Simple figures? Exact Match Trademarks in Removal Procedure

Copyright © 2016 Eversheds Attorneys Ltd. | −Domain name that resembles a trademark without being an exact match Derivative of trademark May differ from the trademark by one letter only Figurative trademarks Misspelled domain names (typosquatting) Domain Name Resembles Trademark Trademarks in Removal Procedure

Copyright © 2016 Eversheds Attorneys Ltd. | −The protection time of trademarks begins once the trademark application becomes pending −However, the domain name will not be removed if the opposition period of the trademark has not expired yet Time Priority Rule Trademarks in Removal Procedure

Copyright © 2016 Eversheds Attorneys Ltd. | −“Trademark means trademark that has been entered into the register of trademarks or an established trademark referred to in the Trademarks Act” −However, unregistered trademark may be cause for removal only if “unquestionably established” −Exceptions: court or PTO has confirmed that the trademark is well-known or established −Recommended to take the dispute to a court instead of FICORA if the claim is based on unregistered trademark Established trademarks Trademarks in Removal Procedure

Copyright © 2016 Eversheds Attorneys Ltd. | Case Law

Copyright © 2016 Eversheds Attorneys Ltd. | −Even if the domain name and trademark are identical, the domain name will not be removed in case the holder of the domain name can present a good, acceptable reason for registering the domain name −Legally relevant reason is for instance domain name being an exact or partial match to a domain name holder’s trademark Exact Match - Acceptable Reason

Copyright © 2016 Eversheds Attorneys Ltd. | −The Supreme Administrative Court 2006:1697  MB Rahastot Ltd registered domain name mb.fi  Sanoma Magazines Finland Ltd had earlier word mark MB  FICORA had removed domain name mb.fi as it was based on trademark MB  The court found that MB Rahastot Ltd had been using letters ‘MB’ in its business before the registration of the domain name  “MB” also a dominant element of the trade name  FICORA not competent to decide who had a better right Case Law – Acceptable Reason, No Removal of the domain Acceptable Reason

Copyright © 2016 Eversheds Attorneys Ltd. | −The Administrative Court of Helsinki 2005:1185  Finlayson Ltd had registered domain name patja.fi (word ‘patja’ is ‘mattress’ in English)  Finlayson Ltd manufactures inter alia mattresses  Fujitsu Services Ltd had earlier trademark PATJA  FICORA removed domain name patja.fi as it was based on trademark PATJA  Court: Domain name holder’s right should also be based on trademark or similar right  Field of business irrelevant  No acceptable reason Case Law – No Acceptable Reason, Removal of the domain Acceptable Reason

Copyright © 2016 Eversheds Attorneys Ltd. | −A domain name holder's intention of obtaining benefit or harming is assessed when the domain name is not an exact match, but resembles the trademark −The holder of the trademark must give reasons for intention of obtaining benefit or harming another −In FICORA's decisions, the removal of a domain name has always required strong proof of violation Similar to a Trademark Clear Intent to Benefit or to Cause Damage

Copyright © 2016 Eversheds Attorneys Ltd. | −Intention to obtain benefit from the reputation or fame of another party's trademark −Intention to harm another party's business activities or to prevent the other party from obtaining the domain name −May be relevant: trademark exceptionally well-known trademark having significant business value the parties competing in the same market −Misspelled trademarks Clear Intent to Benefit or to Cause Damage Similar to a Trademark

Copyright © 2016 Eversheds Attorneys Ltd. | −Market Court 34/16 −Trademark HS (Helsingin Sanomat) −Domain names hs24.fi, hs2.fi, hsurheilu.fi ja hstalous.fi −Purpose is to attract to a website more visitors who make typographical errors when entering web addresses −Intention to benefit from the domain names Intent to Benefit Similar to a Trademark

Copyright © 2016 Eversheds Attorneys Ltd. | Intent to Cause Damage Similar to a Trademark −Helsinki Court of Appeal 2012:844 −Trade name Den Braven Sealants B.V. and trademark Den Braven ZWALUW −Domain denbraven.fi −Same field of business −Same geographical area −Competitors −Earlier cooperation −Intention to cause damage

Copyright © 2016 Eversheds Attorneys Ltd. | −Supreme Administrative Court 2006:1266 −Domain name verkkokauppa.fi −in English “online shop” / ”webstore” / ”e-shop” −Trade name ”Suomen Verkkokauppa” −Similar to trade name but no intention of obtaining benefit or causing damage No intent to benefit or to cause damage Similar to a Trademark

Copyright © 2016 Eversheds Attorneys Ltd. | Typosquatting

Copyright © 2016 Eversheds Attorneys Ltd. | −FICORA may remove a domain name if the domain name holder has applied for several domain names that are derivatives of a trademark −A maximum period for removal is one year −FICORA does not have to consult the holder of a domain name −Several trademark holders? Several trademarks? −No case law yet Typosquatting

Copyright © 2016 Eversheds Attorneys Ltd. | Questions?

Copyright © 2016 Eversheds Attorneys Ltd. | Questions? Thank you!

Copyright © 2016 Eversheds Attorneys Ltd. | eversheds.fi Copyright © 2015 Eversheds Attorneys Ltd. | Kati Rantala Specialist Counsel, Attorney-at- Law, Trademark Attorney M T