The Complainant is Mary C. Hall, DBA, The Recessionista of Redondo Beach, California, United States of America, self-represented.
The Respondents are Domain Discreet Privacy Service of Jacksonville, Florida, United States / Kristin Whiting of New York, New York, United States.
The disputed domain name <therecessionista.net> is registered with Register.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2013. On December 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 3, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the first amended Complaint on January 3, 2014. The Complainant filed the second amended Complaint on January 6, 2014.
The Center verified that the Complaint together with the first and second amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2014.
The Center appointed Angela Fox as the sole panelist in this matter on February 11, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant has been operating a website and blog at “www.recessionista.com” since July 17, 2008. The name of the blog is “The Recessionista” and it describes itself as a “guide to surviving the downturn in style”. It provides affordable fashion tips and advice.
The Complainant is the owner of the following trademark registrations referred to in the Complaint:
|
Trademark |
Country |
Reg. No. |
Class |
Filing / Registration Date |
|
THE RECESSIONISTA |
United States |
4340332 |
41 |
December 17, 2008 / May 28, 2013 |
|
THE RECESSIONISTA |
United Kingdom of Great Britain and Northern Ireland |
2414059 |
38 |
April 20, 2009 / July 31, 2009 |
|
THE CHIC RECESSIONISTA |
United States |
4246239 |
41 |
January 16, 2009 / November 20, 2012 |
Details of these registrations were annexed to the Complaint.
The disputed domain name was registered on October 14, 2012. It is in use for a blog on the topic of affordable fashion for those going through the economic downturn. The site is also in use to advertise the Respondent’s offer for sale of second-hand clothing and accessories through the eBay online auction site.
The Complainant contends that the disputed domain name is identical or confusingly similar to its registered trademarks THE RECESSIONISTA and THE CHIC RECESSIONISTA, which the Complainant has used since 2008 in relation to a blog on the topic of fashion during the economic downturn and frugal living tips.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s use of the disputed domain name in respect of a website identifying itself as “The Recessionista” does not give rise to a right or legitimate interest in the Complainant’s view because it is likely to cause confusion and deception of Internet users familiar with the Complainant’s blog. The Complainant also refers to the Respondent’s use of “Recessionista” and “The Recessionista” as metatags on the webpage linked to the disputed domain name as likely to confuse and deceive Internet users. The Complainant submits that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, nor is it making any legitimate noncommercial or fair use given the confusion that the Complainant says the disputed domain name creates.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. Had the Respondent conducted an Internet search or a search of the United States Patent and Trademark Office records before the disputed domain name was registered, it would have been aware that the Complainant had already registered and was using THE RECESSIONISTA trademark. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the comments on it. The Respondent’s use of “The Recessionista” and “Recessionista” as metatags, and the text on the Respondent’s homepage, serves to demonstrate that the Respondent is attempting to confuse Internet users familiar with the Complainant’s THE RECESSIONISTA blog.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
The disputed domain name is identical to the Complainant’s registered trademark THE RECESSIONISTA, differing only in the non-distinctive domain name suffix “.net”.
The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
The Respondent has made no effort to refute the Complainant’s allegation that the Respondent has no rights or legitimate interests in the disputed domain name.
It is, however, part of the record that the disputed domain name is in use in relation to a website containing a blog offering fashion and frugal living tips for those living through the economic downturn. The Respondent’s website also advertises the Respondent’s second-hand clothing and accessories for sale through the eBay online auction site, providing links to enable visitors to view and bid on the merchandise. Consequently, the Respondent is not making a purely non-commercial use of the disputed domain name under paragraph 4(c)(iii) of the Policy. Rather, the Respondent appears to have been using the disputed domain name, inter alia, to offer goods for sale. If these activities amounted to a bona fide offering of goods, then they may give rise to a right or legitimate interest in the disputed domain name under paragraph 4(c)(i) of the Policy, provided the Respondent was making such use before notice to it of the dispute.
The Respondent’s website contains archived content from as early as July, September and October 2012 (the October 2012 entries are in fact the most recent content on the site, and an Internet search suggests that the Respondent’s blog has moved to a different website altogether at “www.therecessionistastylinscout-kristin.blogspot.co.uk”). The July and September 2012 content cannot have been available at those dates on the site linked to the disputed domain name since it was not registered until October 14, 2012; it may perhaps have been posted previously on another site, or may simply have been back-dated when the site linked to the disputed domain name went live. Regardless, though, the October 2012 blog post is dated October 14, 2012 and it therefore appears that the disputed domain name was in use for the Respondent’s blog and for the promotion of the Respondent’s business in the sale of second-hand clothing and accessories since the disputed domain name was registered, and therefore since before notice to it of this dispute.
There is nothing on the website linked to the disputed domain name to suggest that the Respondent’s offer for sale of second-hand clothing and accessories is not in fact a bona fide offering of goods. Nor has the Complainant suggested that the Respondent’s activities are not genuine (indeed, the Complainant does not refer at all to the Respondent’s offer of goods for sale, although those offers are clearly displayed on the Respondent’s website). Although the Complainant contends that the disputed domain name and the content on the Respondent’s website are inherently likely to create confusion with the Complainant’s trademark, the mere fact that use may give rise to confusion or infringe another’s trademark does not necessarily mean that an offer of goods for sale through a website is not bona fide. If that were the case, then it would be necessary in every case where a respondent is making a commercial use for panelists to determine whether the respondent’s activities amounted to trademark infringement in order to assess whether the use gives rise to a right or legitimate interest. This is manifestly not what the Policy, which is designed to deal with cases of cybersquatting rather than cases of infringement, intends.
The Panel notes that the word “recessionista” is defined in numerous online dictionaries as referring to fashion-conscious individuals of limited financial means. This descriptive meaning is directly relevant to the content of both parties’ websites. It is not clear who first coined the term and when, but the descriptiveness of “recessionista” suggests that in relation to budget-conscious fashion tips, the Respondent might have been able to make out a case for a right or legitimate interest in <therecessionista.net> based on a relevant descriptive meaning. Having said that, and although the Respondent did not file a Response, the Panel is of the opinion that the fact that the Respondent was making what appears to have been a bona fide offering of goods through the disputed domain name before notice of the dispute (paragraph 4(c)(i) of the Policy) is sufficient to rebut the Complainant’s assertions that the Respondent does not have rights or legitimate interests in this case.
Consequently, on the information and materials before it, and despite the Respondent’s default, the Panel concludes that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Complaint must therefore fail.
As the Complainant also made submissions in relation to bad faith registration and use of the disputed domain name, the Panel will consider those.
The Complainant has proved that it enjoys registered trademark rights in THE RECESSIONISTA, which the Complaint indicates was in use since 2008 for a blog relating to frugal fashion tips. The Complainant’s website indicates that it has received substantial publicity through the news media in the United States, where the Respondent is also based, including in The New York Times, Life, Style and The Observer and on ABC News, NBC News and Headline News. It is certainly conceivable that the Respondent may have known about, or could through Internet searching have easily discovered, the Complainant’s website at the time the disputed domain name was registered. That the Respondent may have been aware of the Complainant when the disputed domain name was registered seems particularly plausible given that the Respondent, Kristin Whiting, describes herself as a network television producer on the website linked to the disputed domain name, and might therefore reasonably be assumed to have a good knowledge of television coverage relating to her subject of interest.
Having said that, though, Internet searching also demonstrates that “recessionista” is a defined descriptive term in numerous online dictionaries, referring to fashion-conscious individuals with limited financial means. Consequently, even if the Respondent had been aware of the Complainant’s trademarks, it seems entirely possible that the Respondent may have adopted the disputed domain name in the belief that it comprised descriptive terms directly relevant to the content of a website offering economical fashion tips and discounted second-hand fashion merchandise for sale, which is the use to which the Respondent put the disputed domain name. It is not clear, therefore, that the Respondent has used the disputed domain name to intentionally attract Internet users by creating a likelihood of confusion with the Complainant’s trademark for commercial gain in a way that would amount to registration and use in bad faith under the Policy.
This is not to say that the Respondent’s conduct does not run the risk of confusing or deceiving consumers, or that it would not amount to an actionable infringement of the Complainant’s trademark rights. It is simply that under the narrow remit of the Policy, it is not possible for this Panel to conclude that the Respondent registered and used the disputed domain name in bad faith.
In any event it is not necessary for the Panel to reach a finding on bad faith in light of the conclusion in relation to rights and legitimate interests. However, had it been necessary to do so, the Panel would likely not on balance have been convinced that the Respondent’s registration and use were necessarily in bad faith, taking into account the apparently descriptive meaning of “recessionista” and the nature of the content on the Respondent’s website.
For the foregoing reasons, the Complaint is denied.
Angela Fox
Sole Panelist
Date: March 16, 2014