New Registry-Registrar Model Enters into Force for .FI Domain Names

The Finnish domain name system will change after the new legislation included in the Information Society Code (917/2014) enters into force on 5 September 2016. After the change, a person or a company will obtain .fi domain names and all related services from their own registrar. Therefore, the internationally known registry-registrar model enters into force in Finland.

The old system, where the Finnish Communications Regulatory Authority (FICORA) has sold .fi domain names, comes to an end. FICORA is going to continue to take care of the technical maintenance of the domain name register.

Here is a summary of the relevant changes:

- All the .fi domain name holders will have their own registrar managing domain names on behalf of the holder.

- Registrars will provide all the related services, such as applications, renewals, transfers, switching registrars, terminations and updating details.

- Local presence and age requirements (age limit of 15) for applications don't exist anymore. Therefore, the fi-domain names are available for a wider audience.

- A combination of first name and last name can be applied by anyone.

---

FICORA's own website contains information about the new practice.

The Market Court: Domain Name Dispute and the Appellant's Allegedly Established Trademarks

The Market Court issued a domain name decision 418/16 on 1 July 2016. According to the court, the appellant, who was opposing a domain name registration, could not prove that its trademarks were evidently established at the time of the domain name application. In result, the revocation and transfer request was dismissed.

Background

The Finnish communications regulatory authority (FICORA) granted a domain name ppi­net.fi to a person X on 9 November 2013.

Te­lia­So­ne­ra Fin­land Oyj (TeliaSonera) requested FICORA to cancel the domain name and to transfer it to TeliaSonera. TeliaSonera argued that the domain name is a derivative of its established trademarks iNET KES­KUS­KA­TU, INET and PP.INET.FI.

FICORA dismissed the request on 18 December 2014. According to FICORA, the establishment of the marks is not evident. 

TeliaSonera filed an appeal to the Market Court against the FICORA's decision.

The Market Court issued its decision 418/16 on 1 July 2016.

The Market Court

According to section 4 paragraph 3 of Domain Name Act 228/2003 (amendments up to 397/2009 included), a domain name shall not be illegally based on a protected name or trademark owned by another party or on a natural person’s name.

According to section 3 sub-paragraph 3 of the Act, protected name or trademark means a name or trademark that has been entered into the trade register or into the registers of trademarks, associations, foundations, or political parties; or an established name, a secondary mark or trademark referred to in the Business Names Act (128/1979) or Trademarks Act (7/1964); or a name of a public body, unincorporated state enterprise, independent public corporation, public association, or diplomatic mission of a foreign state or their bodies.

According to section 12 paragraph 1 sub-paragraph 4 of the Act, FICORA may revoke a domain name, if there are weighty reasons to suspect that the domain name is a derivative of a protected name or trademark or a derivative of a natural person’s name that has been obtained with the obvious intent of obtaining benefit or harming another, and the holder of the name or trademark requests that the name be revoked and the domain name holder has not presented an acceptable reason for its right within a period of two weeks.

According to section 12 paragraph 2 of the Act, FICORA may transfer a domain name that has been revoked by virtue of paragraph 1 (2–4) to a party that has requested the revocation.

The court referred to Supreme Administrative Court (SAC) ruling 2006:41, where SAC stated that the competence of FICORA is, regarding the section 12 paragraph 1 sub-paragraph 4 of the Act, only limited to situations where it is evident that the domain name is an unlawful derivative of a protected trademark.

The court also referred to legal literature where it is stated that the establishment of the mark has to be evident. This requirement is justifiable because of the simplified procedure used in the assessment of the domain name applications.

The court had to assess whether the appellant's marks were evidently established at the time of the domain name application on 9 November 2013. If that was the case, the marks are then considered as protected trademarks and eligible for the protection provided in the section 12 paragraph 1 sub-paragraph 4.

TeliaSonera argued that the mark iNET KES­KUS­KA­TU was introduced in 1994 and it was used for a long time on a website inet.fi. According to TeliaSonera, this website was one of the most popular and used websites in Finland in the late 1990's.

TeliaSonera argued also that the mark INET has been used actively for internet services since 1995. INET was the most popular home internet plan in Finland. TeliaSonera has also had some other services with the mark INET, such as INET voice chat and INET live.

TeliaSonera argued also that the mark PP.INET.FI has been widely used for email services since 1995 and there are still many active users of the email addresses @pp.inet.fi.

The court stated that the marks of the appellant were introduced in the 1990's and they have been widely used back then. However, the assessment here required evidence of the alleged establishment at the time of the domain name application on 9 November 2013. The court stated that the provided evidence is not able to prove that the appellant's marks were evidently established at the time of the domain name application. Therefore, the marks were not protected and there was no need to assess whether the domain name has been obtained with the obvious intent of obtaining benefit or harming the appellant.

The action was dismissed.

The court ordered the appellant to pay the defendant's legal fees, in total 3 441 euros.

The Market Court: Domain Name Was Transferred Without the Consent of the Holder

The Market Court issued a domain name decision 383/16 on 27 June 2016. According to the court, there were weighty reasons to suspect that the domain name was transferred to another party without the consent of the holder of the domain name and the transferee did not present an acceptable reason for its right. The court stated that the mere sending of a transfer key in an email is not, per se, expressing the consent of the domain name holder.

Background

The Finnish communications regulatory authority (FICORA) granted a domain name suu­rel­la­sy­da­mel­la.fi to the Federation of Evangelical Lutheran Parishes in Tampere (The Federation of Parishes) on 7 September 2005. The website contains information about volunteer work in the Federation of Parishes. The Federation of Parishes has also a trademark "Suurella Sydämellä" ("With a Big Heart" in English), registered in 2011.

Agile Design Oy (Agile) has, based on a contract between it and the Federation of Parishes, taken care of the maintenance issues regarding the domain name.

In September 2013, FICORA let the Federation of Parishes to know that some problems had occurred with the name servers of the domain name. The Federation of Parishes instructed Agile to take care of these problems. On 16 September 2013, the Federation of Parishes sent an email to Agile and the email included, inter alia, a transfer key. [A fi-domain name is transferred to a new holder by using a transfer key.]

Agile used the transfer key and the domain name was transferred to it on 12 October 2013.

The Federation of Parishes requested FICORA to cancel the domain name and to transfer it back to the Federation of Parishes. The Federation of Parishes argued that the domain name was transferred to Agile without the consent of the Federation of Parishes. Agile was, according to the Federation of Parishes, only allowed to fix the occurred problems. FICORA dismissed the request on 15 June 2015.

The Federation of Parishes filed an appeal to the Market Court against the FICORA's decision. 

The Market Court issued its decision 383/16 on 27 June 2016.

The Market Court

According to section 8 paragraph 2 of Domain Name Act 228/2003 (amendments up to 397/2009 included), a domain name may be transferred to another party. The transfer shall be effective, when the transferee has made an application for the transfer in accordance with section 4 a and the holder of the domain name has consented to the transfer. [A transfer key is expressing the consent.]

According to section 12 paragraph 1 sub-paragraph 2 of the Act, FICORA may revoke a domain name, if there are weighty reasons to suspect that the domain name has been transferred to another party without the consent of the holder of the domain name, protected name or trademark, and the holder requests that the name be revoked, and the transferee has not presented an acceptable reason for its right within a period of two weeks. According to section 12 paragraph 2 of the Act, FICORA may transfer a domain name that has been revoked by virtue of paragraph 1 (2–4) to a party that has requested the revocation.

The Federation of Parishes provided evidence of the subcontract that existed between it and Agile. According to that evidence, Agile is taking care of the maintenance issues regarding the domain name. The court stated that there is a weighty reason to suspect that the domain name suu­rel­la­sy­da­mel­la.fi was transferred to Agile without the consent of the Federation of Parishes.

The court had to assess next whether Agile has presented an acceptable reason for its right.

Agile argued that the parties had conversations about the transfer and that the transfer was consensual. According to Agile, it was not a mistake that the Federation of Parishes gave the transfer key via email. The chief executive officer (CEO) of Agile told that he and a project leader B from the Federation of Parishes had conversations about the transfer during the year 2013 and it was clear to both parties that the domain name should belong to Agile. The CEO A told also that Agile could have fixed all the server problems without the transfer key and therefore the sole purpose of the transfer key was to transfer the domain name to Agile.

The project leader B confirmed that the parties had several conversations about the domain name during the year 2013. However, no conversations were held regarding the transfer of the domain name. B or the Chief information officer C, who sent the transfer key to B, did not even have the powers to authorize the transfer on behalf of the Federation of Parishes. B understood later that the transfer key was not needed in order to fix occurred problems regarding the name servers.

The Chief information officer C confirmed the statements presented by B.

The court stated that Agile has not provided any documentary evidence regarding the transfer. Agile has only referred to the consensus between the parties in the conversations in 2013. Agile could not clearly specify the moment when this consensus was reached. The statements of the parties are contradictory. Nothing, apart from the statement made by A, supports the claim that the domain name was transferred with the consent of the Federation of Parishes.

If it's not in a contract, it didn't happen!
Image courtesy of edar at Pixabay.com

The court stated that the sole purpose of a transfer key is to transfer a domain name from one registrar to another. The sending of the transfer key was not needed here in order to fix the problems regarding the name servers. However, this does not mean that the sole announcement of the transfer key to a party, who is responsible of taking care of the maintenance issues regarding the domain name, would authorize the party to transfer the domain name. 

The court concluded that Agile has not presented an acceptable reason for its right.

The court reversed the earlier decision of FICORA and the case was sent back to FICORA for the revocation and the transfer of the domain name.

The court also ordered the defendant to pay the plaintiff's legal fees, in total 22 374,36 euros plus legal interest.