Extension of dispute resolution scheme for the .no domain

1. Introduction
2. General principles for dispute resolution scheme
3. The framework for the dispute resolution scheme
4. The framework in practice
   • Establishment of the complaints board
   • Procedure for the complaints board
   • Basis for the board's decisions
   • Implementation of the board's decisions
   • Retroactive effect

1. Introduction

The current regulations and registration procedures do not require applicants to provide evidence of any right to the domain name for which they are applying. The applicant signs a declaration form in which he or she affirms that the domain name does not entail unlawful infringement of a third party's registered or unregistered rights to the name and does not violate Norwegian law, but Norid does not check this.

The regulations were chosen after a public hearing in the autumn of 2000, which indicated that the Internet community in Norway wanted regulations emphasizing flexibility for applicants as well as rapid and inexpensive processing of applications. Regulations of this type also entail greater potential for conflict, but the majority of those who responded regarded this as less important. A result of choosing these regulations is that any cases in which a domain name represents an infringement of anyone's rights must be handled after the name has been registered.

After the liberalization in 2001, the Ministry of Transport and Communications created a working group in which Norid participated. One of the objectives of the working group was to look at whether an extension of the dispute resolution scheme should be established as an alternative to the courts of law for those who wish to complain that the registration of a domain name infringes their rights. The group concluded that with regulations that make it easy to register a domain name that infringes another party's rights, it must be correspondingly easy to do something about the infringement later. There was thus a desire for a dispute resolution scheme that could provide a faster and cheaper alternative to settling conflicts than court proceedings allow.

The working group's conclusions were submitted for comments in the summer of 2002. The results of this hearing showed that there was broad agreement with the working group's conclusions, and on 1 August 2003 an administrative regulation ["forskrift"] was approved, specifying that the .no domain should have a dispute resolution scheme and stipulating certain guidelines for the scheme. As a result of this Norid will create a new authority for hearing complaints, and will extend the dispute resolution scheme when the regulation becomes effective on 1 October. This document provides the background for some of the principal considerations and choices that have been made in this connection.

2. General principles for a dispute resolution scheme

The basic principles for a dispute resolution scheme are

• correct decisions
• rapid processing at a moderate cost
• a confidence-inspiring and considerate approach

Correct decisions
It is naturally important that a dispute resolution scheme, to the greatest extent possible, ends up with correct decisions. To achieve this, the domain complaints board must have the necessary professional knowledge and competence in the area. At the same time, the basis on which the complaints board is to make its decision - that is, the statements of the parties and any other information in the case - must be prepared in the best possible way. In this connection, it is important that both parties have had the opportunity to present their views on the dispute to the complaints board, and have been able to hear and comment on the other party's viewpoint.

Rapid processing at a moderate cost
The cost to the complainant for using the dispute resolution scheme should be moderate. From this, it follows that the process should be simple enough for the parties to take part in without depending on legal assistance, which would make participation more expensive. In addition, it should be possible for the dispute resolution scheme to result in a decision without delay. To achieve this, the process should be simple, with the fewest stages possible. This in turn sets requirements for the time limits for responses imposed on the individual participants in the process, and creates restrictions on how thorough the investigation of the case can be before the decision is taken.

A confidence-inspiring and considerate approach
It is natural to base the scheme on principles that are used in equivalent processes, including civil proceedings in the legal system.

The most relevant principles are:

• Independence: It must be ensured that the complaints board is independent of the parties, does not share the interests of an individual party, and treats the parties objectively.

• Legality: The dispute resolution scheme shall not deprive the parties of the protection that they would otherwise have had through the general legal system; the reasons for all decisions shall be stated; and the decision shall be announced to the parties as soon as possible after the decision has been made.

• Openness: The parties must have full access to information about the scheme so that they know what is involved when they decide to complain. This means that procedures and other relevant information about the process must be publicly available. In legal proceedings it is also customary that transcripts of of court records, judgements and orders are available to the public. In the same way, previous decisions from the complaints board should be public so that it is possible to find information about how the scheme functions in practice.

• Representation: It shall be possible for the parties to be represented or assisted by a third party in the proceedings.

Weighing up between the various principles
The dispute resolution scheme for the .no domain should fulfil all these principles as far as possible. Since some of the principles conflict with one another, there is still a need to discuss and weigh up which principles should be given priority. The most obvious conflict is between the principle of correct decisions and the principle of rapid processing at a moderate cost. The greater the effort one makes to ensure that the complaints board makes correct decisions, the more detailed the procedure relating to investigation of the complaint must be, which in turn entails higher costs and more time-consuming proceedings. The background for creating an alternative dispute resolution scheme as a supplement to the courts of law is the desire for a scheme which is faster and cheaper to use, and which therefore has a lower threshold for the parties who will use it. It is thus reasonable that the principle of rapid processing at a moderate cost should be given priority over the principle of correct decisions. This is in accordance with the recommendations from both WIPO [World Intellectual Property Organization] and the European Commission.

It is however important to ensure that the complaints board makes the most correct decisions possible. The primary safeguard is to ensure that the complaints board has the necessary competence in the area. In a simple and efficient process, both parties have the opportunity to present their views on the dispute and to hear and comment on the other party's view. This provides a certain level for the basis on which the complaints board makes its decision. However, giving priority to rapid processing at a moderate cost implies that it may be appropriate to restrict the dispute resolution scheme to simpler cases and refer the more complex cases to the courts of law, where the requirement for correct decisions is given priority over efficiency.

The principles which form the basis for a confidence-inspiring and considerate approach can largely be fulfilled without conflict with the desire for a rapid process at a moderate cost.

3. The framework for the dispute resolution procedures

The framework for the dispute resolution procedures is to be laid down through the new regulation. The articles relating to the dispute resolution scheme are reproduced in the box below.

Section 7 The dispute resolution scheme
The registry is obliged to establish a domain complaints board. If there are several registries, they shall establish a common complaints board.

The complaints board shall be granted a mandate to hear complaints:

1. from an applicant against the registry's decisions,
2. from an owner against the registry's decisions,
3. from the registry, that a name has been registered in conflict with the declaration form,
4. from a third party, that a name has been registered in conflict with the third party's rights,
5. from a public-sector body, that the registration creates an unwarranted impression that it is associated with public-sector administration or the exercise of public powers
6. from the Norwegian Post and Telecommunications Authority, that a domain name has been registered in conflict with this regulation.

The complaints board shall have the opportunity to refuse a complaint in accordance with rules stipulated in further detail. The registry has a duty to comply immediately with the decisions of the complaints board. The registry shall ensure that the domain name cannot be transferred if mediation has been applied for and while the case is being heard by the domain complaints board.

The registry may fund the domain complaints board through a supplement to the registration fee and a contribution from the complainant. The registry provides procedures for the complaints board in line with the principles in this regulation. The registry shall gather points of view from the users' representatives and the authorities before approval and significant change of procedures and before the board's members are appointed. The Norwegian Post and Telecommunications Authority shall be informed about all the changes.

The decisions of the complaints board are public, except for information about technical equipment and procedures as well as operational and business matters which should be kept confidential for competitive reasons out of consideration for the party to which the information relates.

The complaints board shall hear disputes associated with domain names registered after this regulation has become effective.

Section 8 Time limit for complaint
Complaints under Section 7, second subsection, letters a and b, must be filed within one month of the date on which the applicant or owner received notification of the registry's decision. Other complaints under Section 7, second subsection, must be filed at the latest 3 years after the domain name was registered.

References to other parts of the regulation are replaced by the text to which reference is made. The complete regulation is available in Norwegian at http://www.lovdata.no/for/sf/sd/xd-20030801-0990.html

4. The framework in practice

4.1 Establishment of the complaints board

From the regulation:
"The registry provides procedures for the complaints board in line with the principles in the regulation. The registry shall gather points of view from the users' representatives and the authorities before approval and significant change of procedures and before the board's members are appointed. The Norwegian Post and Telecommunications Authority shall be informed about all the changes."

Procedures for the complaints board are prepared on the basis of the responses from the public hearing associated with the working group's report. The hearing covered only the more general principles, and a number of details related to the practical procedures have therefore been discussed with Norid's advisory body, which has representatives from industry and commerce, the authorities, Internet stakeholders, consumer bodies and other affected parties.

Who should sit on the complaints board?
To be able to fulfil the principle that the board is to come to correct decisions, it is vital that the board has the necessary competence. The board has a particular need for people with legal expertise, and especially expertise in trademark law. Knowledge of Internet technology and the limitations that the technology imposes, as well as knowledge of the registry's task, is also an advantage.

In line with the principle of independence, it is important to avoid as far as possible having members of the complaints board who come from organizations with the task of promoting the interests of one of the parties. Among other things, this means that although knowledge of trademark law is necessary, it is important at the same time that the complaints board members do not themselves have an interest in strengthening the position of certain types of rights over others. In addition, the complaints board members and the board as such shall be independent of Norid's activities, as Norid may be a party to a complaint.

The specific composition of the board has been determined after discussions with Norid's advisory body.

4.2 Procedure for the complaints board

Three different types of complaint
The regulation specifies six complaint situations that the complaints board can handle. These can primarily be divided into three different types of complaints, that is, complaints against Norid's administrative procedures (previously handled by the original complaints body, NOK), complaints about rights, and special complaints. The various types of complaints are presented in the table below.

In the main, the three types of complaint will be treated according to the same formal procedures, even though there are different parties with the role of complainant and respondent. The kind of information that the board needs from the parties will also vary to some extent. The regulation and the body of rules for the .no domain will form the basis of the board's decisions in all types of complaint, but in cases involving rights Norwegian law, especially the Trademarks Act (varemerkeloven) and the Marketing Control Act (markedsføringsloven), will be most relevant as a basis for a decision.

A summary of the various parties in the types of complaint appears in the figure below.

Delimitation of complaints regarding rights
The principle governing the types of conflicts over rights that the complaints board is to resolve must be considered. The choice is between covering all types of complaints regarding rights, including complaints where the parties have more or less equivalent rights, and limiting complaints to the obvious cases (where one party holds rights, while the other party does not).

In its ccTLD Best Practices for the Prevention and Resolution of Intellectual Property Disputes, WIPO recommends initially restricting the procedure to the obvious cases, and then extending it to cover a wider area after experience has been gained in the use of the model. In the hearing conducted in connection with the working group's proposal, opinions differed substantially. Some people feel that the board should hear only the obvious cases, while others would like the board to hear all types of disputes, including disputes where both parties have the same trademark.

The regulation allows the complaints board to refuse cases on the basis of the rules that the registry stipulates:
"The complaints board shall have the opportunity to refuse a complaint in accordance with rules stipulated in further detail."

Since the scheme is new in Norway and the dispute resolution scheme must give priority to the principle of rapid processing at a moderate cost, Norid regards it as appropriate to include a safeguard against incorrect decisions by restricting the dispute resolution scheme so that the more complex cases are refused and must if necessary be decided by the courts of law. Norid's advisory body supports this assessment. For the moment, the board will therefore be restricted to hearing the cases that the board regards as simple to decide. After one year, the scheme should be evaluated and possibly extended to include more complex conflicts.

Complaint procedure
In the design of the procedure itself, there are several considerations to be weighed up. On the basis of the principle of processing at a moderate cost, the procedure should be so simple that it is not necessary to use legal assistance or representation. Similarly, clear time limits must be set to ensure the progress of the procedure so that the principle of rapid processing is fulfilled. The procedure must also give both parties the opportunity to present their views on the dispute, and to hear and comment on the other party's point of view, so that the basis on which the complaints board makes its decision is the best possible. The parties bear the responsibility for presenting this basis, but in exceptional cases it is possible for the board to request more information if its members consider that the parties' preparation of the case is not good enough.

If a court case regarding the domain is in progress, or if a court case is initiated while the complaint proceedings are taking place, hearing of the complaint is discontinued. The courts of law function as the appellate authority of the complaints board, and thus there is no point in requiring the board to make a decision when the case has already been lodged with the appellate authority.

The working group recommended in its report that the dispute resolution scheme should offer mediation as a alternative, since many of the current domain-name conflicts end in an amicable settlement. Norid has chosen to follow the recommendation, so that mediation is possible if both parties desire this. Out of consideration for the requirement for processing as fast as possible, the mediation stage is omitted if one of the parties does not want mediation. Mediation is undertaken by the complaints board. If the parties do not reach agreement, the mediation shall not bind the parties or establish guidelines for the decision of the complaints board.

The procedure provides for the following progression for all types of complaints:

1. The complainant pays the complaint fee and submits a complaint, followed by a receipt for payment of the complaint fee and relevant supporting material (copy of trademark certificate or similar for complaints regarding rights, copy of the application and rejection for complaints about Norid's administrative procedures, etc.).
2. The secretarial function forwards the complaint to the respondent.
3. The respondent can send a response to the complaint.
4. The secretarial function sends the complaint and response to the complaints board for processing. A copy of the respondent's response is sent to the complainant at the same time.
5. For complaints regarding rights, the complaints board undertakes informal mediation between the parties if both parties want this.
6. The complaints board can request further explanations if the supporting material is unclear. If not, the board makes a decision.
7. The secretarial function sends the decision to the parties.
8. The decision is implemented.

The secretarial function is purely administrative, with the sole duty of receiving and passing on information between the parties and the complaints board, as well as notifying Norid that a complaint is being heard. The Norwegian Post and Telecommunications Authority has asked Norid to undertake this function. Norid's view is that when the registry must be informed about each complaint in any case to make it possible to freeze or block the domain, it will be an advantage that the secretarial function is close to the registry. Since the secretarial function is purely administrative, it is unlikely that Norid's impartiality will be questioned if Norid performs this function. However, if it is later extended, for example, to prepare recommendations to the complaints board, it will be desirable to move this function. With regard to the secretarial function and the dispute resolution scheme in other respects, the language to be used must also be defined. In line with WIPO's recommendations, the language in which the registrant agreement is written has been chosen, i.e. Norwegian.

What happens to the domain name while the complaint is being heard?
>From the regulation:
"The registry shall ensure that the domain name cannot be transferred if mediation has been applied for and while the case is being heard by the domain complaints board."

The background for this clause in the regulation is the desire to prevent subscribers (domain name owners) who have registered the domain name in bad faith from transferring the domain name to a third party who is not involved in the conflict while the complaint proceedings are taking place, so-called "cyberflight". In line with the regulation, Norid will not allow the subscriber to transfer a domain name from the time that a valid complaint is received until the domain complaints board has stated its decision. If the decision entails compulsory deletion or transfer of the domain name to the complainant, the prohibition against transfer applies until the board's decision has been implemented, or a legally binding judgment has been made in the case.

If the subscriber deletes the domain name while the complaint proceedings are in progress, Norid will block the domain name until the case has been decided. The hold prevents other people from registering the name as long as the hold is in force. If the complaints board decides that the domain name must be transferred to the complainant, Norid will implement the decision. If not, the hold on the domain name will be removed without further notice. In the same way, Norid will block the domain name if the complaint involves Norid's rejection of an application for registration, provided that the name has not been registered by others. The hold is intended to ensure that the name is not registered by others while the complaint proceedings are in progress. If the complaints board decides that the rejection must be annulled, Norid will register the domain name in the applicant's name. In the opposite case, the hold on the domain name will be removed without further notice.

Funding of the complaints board
>From the regulation:
"The registry may fund the domain complaints board through a supplement to the registration fee and a contribution from the complainant."

It is a high-priority principle that the cost of using the dispute should be moderate. It follows that the complaint procedure should be simple and low-cost, and that funding of the complaints board is strictly based on costs. Based on advice from Norid's advisory body, the initial funding structure will be set up to cover most of the cost through the contribution paid by the complainant. The rest is covered by the registry, for the moment without a supplement to the registration fee. The complainant's contribution is the same for all three types of complaint.

The proposal from the working group was to link the complainant's contribution to the fee for the proceedings, and that the money should be refunded to the complainant if the complaint is upheld. After discussion with Norid's advisory body, Norid concluded that linking the complainant's contribution to the fee for the proceedings is a good solution, but that it would not be advisable to refund the complainant's contribution. The complaint proceedings have a cost, and it is not necessarily appropriate that the registration system - and indirectly all those who apply for domain names under .no - should pay the entire cost. The exception is if a party complains against Norid's decision and the complaint is upheld. It is then reasonable that Norid should refund the complainant's contribution.

Several complaints from the same party
The British domain name complaint system makes it possible for one complainant to file several complaints against the same respondent. The complainant's contribution is then set so that it covers up to five complaints against the same respondent. The advantage of such a system is that it enables the complainant to have several similar cases heard without having to pay the complainant's contribution more than once. The disadvantage is that the complainant's contribution becomes relatively high for parties who have only one complaint. In the same way, the time limits set for the board and the respondent take into account the possibility that they must sometimes deal with several complaints, which in turn means that it may take longer than necessary to obtain a response to a single complaint.

Experience from WIPO's dispute resolution scheme indicates that there will be a number of cases where the differences in the names to which the complaint refers are significant enough to require the complaints board to conduct a separate assessment of whether each name infringes the complainant's rights, even though the names are variants of each other. If all these names must be treated as a single case, the case may become so complex that the complaints board has to refuse it.

After careful consideration, Norid has chosen to follow the example of Sweden and Denmark, and not provide for accepting several complaints in a "package" initially. This is because we consider it important to keep prices and processing time low for single complaints, and at the same time to keep the proceedings as simple as possible when the new scheme is established. If an evaluation of the dispute resolution scheme reveals that there is a great need for the possibility to complain about many names at a time, the introduction of "package complaints" may be reconsidered.

4.3 Basis for the board's decisions

With regard to complaints regarding rights, a complainant can, in theory, come from any country. The subscriber will however be Norwegian, and must thus comply with the legal rules and laws which apply here. Since the board also operates in Norway, and .no is the Norwegian top-level domain, the legal rules in effect will be Norwegian, and the board should decide the complaint on the same basis as Norwegian courts of law. Norwegian law has its own provisions on the choice of law, that is, provisions on which country's laws apply, if questions arise about the extent to which foreign law should be taken into account.

The laws which are relevant may vary from case to case. In most cases the Trademarks Act (varemerkeloven) and the Marketing Control Act (markedsføringsloven) will probably be the most relevant, but other laws may also be involved. In each case, it will be up to the board to determine which laws it finds relevant.

In their function, domain names are international, and situations may arise where a complainant claims to have rights which are only registered or used outside Norway. Since the complaint is filed in Norway, the board should consider whether protection for these rights may be claimed in Norway. However, Norid has not considered it desirable to use the regulations and the complaint procedure to expressly restrict the rights to which the complainant may refer, whether to the types of rights (beyond "rights to names") or to where the rights or the holder of the rights come from. International complainants will be able to go to the Norwegian courts of law with their claims, even though they hold rights which are registered outside the country, so it would be inadvisable to exclude them from using the complaints board.

Another issue is that the mechanisms included to ensure that the board makes correct decisions are especially relevant in such cases, so that complaints can be refused as too complex if it is difficult to determine whether protection for the right can be claimed in Norway or not.

Types of decision that the complaints board can make
Since the complaints board is intended as a rapid and inexpensive alternative to the courts of law, it is desirable to exercise some caution regarding which decisions the board can make. The authority of the complaints board is therefore limited to deciding that a domain name must be deleted or transferred from the respondent to the complainant. The exception is a complaint against Norid's decision, where the board may make a new decision. Typical examples of this are complaints against a registration rejection and complaints against compulsory deletion of the domain name - for example, in the case of default on payment.

Since the dispute resolution scheme forms part of the registration system for the .no domain, the board cannot make a decision in conflict with the regulations applicable to the .no domain. The board is also restricted from making decisions about compensation or coverage of costs for the parties, as these are complex issues which should be left to the courts of law. Neither is the complaints board permitted to make a decision which entails the loss of rights for parties other than the two which are involved in the complaint.

4.4 Implementation of the board's decisions

The working group recommended in its proposal that the dispute resolution scheme should conclude with advisory decisions, except for complaints about Norid's administrative procedures, which should be binding. The submission of comments on the working group's proposal showed that the Internet community desired a dispute resolution scheme that was binding for complaints regarding rights as well. This is in line with WIPO's recommendations that the complaint procedure should be mandatory for those who register a domain name and may end in a binding decision, even though the subscriber is not willing to participate. The conclusion after the submission of comments was thus that all decisions made by the complaints board will be binding.

To achieve this, the applicant must expressly consent to participate in any hearing of complaints before the domain name is registered. This is a common provision in a number of the countries that have an extended dispute resolution scheme for domain names. This consent is obtained in that the mandatory dispute resolution scheme forms part of the regulations that the applicant must accept, and is also obtained through the declaration form which is signed on registration of a domain name under .no. Since the subscriber is bound in this way to participate in the complaint procedure, it is important to protect against malicious and unfounded complaints. The fact that the complainant must pay a contribution will probably help to reduce this problem. In addition, the complaints board can assess whether they consider that a complaint has been submitted with malicious intent. If this takes place several times with the same complainant, the complainant may be excluded from the dispute resolution scheme for a period.

From the regulation:
"The registry has a duty to comply immediately with the decisions of the complaints board."

In line with the legality principle, the fact that the decision is binding does not impede one of the parties from taking the case further to a court of law, both during the complaint procedure and after the decision has been made. To give both parties the opportunity to familiarize themselves with the decision before it is put into effect, Norid has in consultation with the Ministry of Transport and Communications chosen to set a period of 7 working days before the decision is implemented. This provides the losing party with an opportunity to go to the courts and have the decision stopped through an interim order, or to initiate a normal court case to decide the issue concerning the rights again. Both the parties can naturally also initiate a court case about the issue concerning rights after the 7 working days; the purpose of the period is only to provide the parties with the opportunity to consider the matter before the decision is put into effect.

From the regulation:
"The decisions of the complaints board are public, except for information about technical equipment and procedures as well as operational and business matters which should be kept confidential for competitive reasons out of consideration for the party to which the information relates."

This is in line with the principle of openness. Making the decisions available to the public enables outside parties to obtain information about the basis for the board's decisions and how the scheme functions in practice. At the same time it provides an opportunity for checking that the board is operating in an objective and neutral way within the framework set by the rules for the .no domain and the regulation. Only the decision itself is made public, not the parties' various submissions with attachments, which are more likely to include sensitive information. However, the parties may apply to the board to omit certain information from the public decision if it is important for competitive reasons to keep the information secret.

4.5 Retroactive effect

Applicants under the .no domain are bound to comply with the regulations in effect under .no. Formally, this could be seen as creating the possibility of including previous registrations in the dispute resolution scheme. Norid's practice has however been that even though small changes to the regulations are implemented with retroactive effect, this does not apply to changes which involve greater interference with the subscriber's rights. This becomes especially relevant because of the long time limit for complaints which is being introduced for cases involving rights. Subscribers who have used the domain name for nearly three years may have built up rights to it after the registration, and it will then be problematic to draw them into a dispute resolution scheme which did not exist when they registered the name. Retroactive effect is also unusual in the legal context, precisely because of the wish for caution in changing the framework that some parties have already accepted.

From the regulation:
"The complaints board shall hear disputes associated with domain names registered after this regulation has become effective."

According to the regulation, the complaints board may only hear complaints about domain names registered after the regulation has become effective. This corresponds with Norid's practice in connection with previous changes to the regulations, and Norid will not create the possibility of binding those who have registered domain names before 1 October 2003 to the new dispute resolution scheme.