The UDRP is not a suitable forum for resolving cases of possible defamation
This dispute reflects the conflict of thought in today’s societies regarding the support of minors on gender. This decision, released on December 12, 2022, reminds individuals to keep several key conditions in mind when filing UDRP complaints for children and adolescents, such as the UDRP complaint filed by the Little Mermaid Observatory of Ideological Discourses on Children and Adolescents.
The company “Little Mermaid Observatory of Ideological Discourses on Children and Adolescents” presents itself as an association aiming to “identify any element related to ideologies concerning children and adolescents” and “preserve children and adolescents from the dangers and consequences pertaining to discourses concerning them”. The association operates the website www.observatoirepetitesirene.org where it publishes articles related to gender dysphoria issues. The domain name <observatoirepetitesirene.org> has been registered on March 2, 2021. However, it is not specified for how long it has been used. In support of his complaint, he asserts, on the one hand, his prior domain name, <observatoirepetitesirene.org> and, on the other hand, his French trademark application “OBSERVATOIRE LA PETITE SIRENE” filed on September 12, 2022, and published on October 7, 2022. The trademark was not yet registered at the time the complaint was filed. The Disputed Domain Name, <petitesirene.org>, on the other hand, was registered on June 4, 2022, by the co-president of the association OUTrans, which aims to support transgender people. This domain name refers to a website dealing with the applicant and alerting the association’s objectives. The Complainant argues that the Disputed Domain Name “constitutes a flagrant and intentional error in the spelling of its prior domain name”. However, the name is clearly not typo squatting, as it uses the words “the little mermaid” explicitly and without error. Firstly, “in view of the dates of filing and publication of the trademark application asserted by the Petitioner, taking into account the minimum duration of the procedure before the INPI, even supposing that the trademark application succeeds in being registered, this registration cannot materially take place before the expiration of the deadline in which the Administrative Commission is required to give its decision“. Thus, the Expert also notes that the sign “OBSERVATOIRE LA PETITE SIRENE” cannot confer any rights under a possible trademark, because it is not used in business. The first condition of the UDRP principles cannot, therefore, be fulfilled. In addition, the expert agrees with the defendant’s argument that the expression “the little mermaid” is used allegorically in gender identity questioning. It could therefore not be excluded that the Respondent has a legitimate interest in the domain name.
Following, the Complainant considers itself defame by the Respondent’s comments. The Complainant also argues that the sole purpose of the Disputed Domain Name is to criticize the association, damage its reputation, and cause confusion among consumers. However, if the Respondent openly criticizes the Complainant via the domain name, confusion seems difficult. In addition, the complainant refers to filing a criminal complaint in the French courts against the Respondent for defamation. In response, the Respondent argues that the Complainant has not provided evidence of its ownership of the <observatoirepetitesirene.org> domain name, but more importantly raises a major argument that the disputed trademark is merely filed and not registered, so that the first condition of the UDRP, which requires the identity or similarity of the domain name to a trademark in which the Complainant has rights, cannot be met. In order to motivate the Respondent’s decision, the Panelist recalls that under paragraph 18 of the Rules of Procedure, it is up to the Respondent to decide, in a discretionary manner, to suspend or terminate the administrative proceeding when the Disputed Domain Name is already the subject of a legal proceeding. In this case, it is unclear whether a criminal complaint has been filed. However, the Panelist points out that it is not up to the Complainant to substitute as the criminal judge in assessing whether the disputed site is defamatory or not. The Panel’s opinion is based on the fact that the Respondent has used the domain name in good faith or in bad faith. The Panel is not able to decide unless the Respondent has used the domain name in good faith. Nevertheless, beyond the issue of defamation, the complaint may be dismissed for other reasons, that the expert raises.
Lastly, the Complainant’s position is that the term “petite sirene” is not a direct reference to the Observatory, but “a tribute to the Anglo-Saxon transgender movement that sees the character of the Little Mermaid in Andersen’s fairy tale as an allegory of trans-identity.” The Respondent claims a legitimate interest in the domain name. Moreover, the Respondent specifies that the disputed name is not commercially used. The Respondent argues that the site only has an informative vocation, falling within the freedom of expression. The Respondent indicates the use of the conditional tense on the site, by incorporating elements published in the press. Finally, the Respondent mentioned that the applicant had not proved criminal proceedings. Above all, the expert was not competent to rule on defamation.
In the end, in view of the considerations linked to the proper administration of justice and considering the general interest nature of the debate in question, the Panel declared itself incompetent in favor of the judicial judge and rejected the complaint lodged by the Complainant, without prejudice to the claims of the parties before the judge.