national arbitration forum

 

DECISION

 

Mary Hall dba The Recessionista v. Ellen London

Claim Number: FA1404001555342

 

PARTIES

Complainant is Mary Hall dba The Recessionista (“Complainant”), represented by Katherine L. McDaniel of Fulwider Patton LLP, California, USA.  Respondent is Ellen London (“Respondent”), represented by Dana S. Gross of Morgan, Lewis & Bockius LLP, District of Columbia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <recessionista.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 22, 2014; the National Arbitration Forum received payment on April 22, 2014.

 

On April 23, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <recessionista.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the registration agreement of GODADDY.COM, LLC and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@recessionista.com.  Also on April 25, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on May 15, 2014.

 

Complainant submitted an Additional Submission, which was received and considered compliant on May 20, 2014.

 

Respondent also submitted an Additional Submission, which was received and considered compliant on May 27, 2014.

 

On May 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant contends, in its initial and supplemental submissions, among other things, that:

 

Complainant uses its THE RECESSIONISTA mark in connection with the dis-tribution of Internet content and blogs that inform Internet users about fashion trends and frugal living tips that may assist Internet users suffering during an economic downturn.

 

Complainant has registered its THE RECESSIONISTA mark with the United States Patent and Trademark Office ("USPTO") (Registry No. 4,340,332, registered May 28, 2013, application filed December 17, 2008).

 

Respondent has registered the confusingly similar <recessionista.com> domain name.

 

Respondent has not been commonly known by the <recessionista.com> domain name.

 

Respondent has no relationship with Complainant, and Complainant has not given Respondent permission to register or use the disputed domain name.

 

The domain name was initially registered June 14, 2008, by another registrant than Respondent, and was thereafter “parked” until September 25, 2011.

 

From October 12, 2011, until February 2014 the <recessionista.com> domain name was used to host blogs and fashion/lifestyle advice in competition with the business of Complainant.

 

In 2011, Respondent filed an application to register the mark RECESSIONISTA with the USPTO, whereupon Complainant filed an opposition to that application with the Trademark Trial and Appeal Board (“TTAB”).

 

Respondent thereafter withdrew its trademark registration application for that mark with prejudice.

 

After February 2014 most of the content on the <recessionista.com> domain name’s website was removed.

 

Respondent has since restructured the resolving website to describe a book being prepared to be sold by Respondent.

 

Respondent has no right to promote this unrelated project through a domain name that is confusingly similar to Complainant’s THE RECESSIONISTA mark.

 

Respondent’s misuse of Complainant’s mark in the disputed domain name has caused a likelihood of confusion among Internet users.

 

Respondent knew of Complainant’s rights in THE RECESSIONISTA mark prior to assuming use of the domain name.

 

Respondent both registered and uses the contested domain name in bad faith.

 

B. Respondent

 

Respondent contends, in its initial and supplemental submissions, among other things, that:

 

Respondent acquired the <recessionista.com> domain name in 2011 from a domain name acquisition service, and first used the domain name on September 29, 2011, to provide readers of its online magazine with financial news and advice about fashion and lifestyles.

 

In 2012, Complainant filed with the USPTO a Consent to Registration permitting an independent third-party, Us Weekly LLC, to register RECESSIONISTA as a mark for specific services, contending that the difference between Complainant’s THE RECESSIONISTA mark and the then-pending RECESSIONISTA mark, i.e.: the single word “the,” sufficiently differentiated the two.

 

Registration of the RECESSIONISTA mark for the benefit of Us Weekly LLC has since been granted.

 

Respondent abandoned its trademark application for RECESSIONISTA because it did not want to undertake the costs of fighting a TTAB proceeding.

 

“Recessionista” is a commonly used term that has been in use since 1993 to describe fashionable lifestyles that can be maintained while living on a budget.

 

Over forty independent parties use the term “Recessionista” in connection with the marketing of fashion-related services.

 

In defense of its application for registration of its THE RECESSIONISTA mark, Complainant argued to the USPTO that its inclusion of “the” in the mark was what made the mark distinct from other uses of the phrase “recessionista.”

Respondent’s abandonment of the trademark application process did not serve as an explicit or implicit admission that Respondent’s use of RECESSIONISTA was in bad faith or that it created a likelihood of confusion with Complainant’s THE RECESSIONISTA mark.  

 

Respondent was unaware of Complainant’s claim of trademark rights in the term THE RECESSIONISTA until after it had acquired its <recessionista.com> domain name.

 

FINDINGS

Complainant has failed to demonstrate that the disputed domain name was registered by Respondent in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(i)       the domain name registered by Respondent is identical or confus-

   ingly similar to a trademark or service mark in which Complainant  

   has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the

   domain name; and

(iii)      the domain name was registered and is being used in bad faith.

 

 

It is customary to discuss these considerations in turn, and in the order in which they are presented in the Policy.  However, because a failure of Complainant to satisfy any of them results in a failure of the Complaint as a whole, the facts presented in this pro-ceeding make it necessary for us to examine but one of them in order to dispose of the matter fully.  See, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum, Sept. 20, 2002) (finding that, because a UDRP complainant must prove all three elements prescribed under the Policy, the failure of a complainant to prove one of them makes inquiry into the remaining elements unnecessary).  

 

Thus the single question which presents itself here is whether the contested domain name was registered “in bad faith” within the meaning of Policy ¶ 4(a)(iii).  This is so because, in order to prevail on the point of Policy ¶ 4(a)(iii), Complainant must prove both that the domain name is being used in bad faith and that it was registered in bad faith.  Accordingly, if the registration of the domain name is not shown to have been effected in bad faith, we need not inquire whether it is now being used in bad faith. 

 

Resolution of the question of bad faith registration of the domain name turns on a point which is undisputed by the parties, which is that Respondent acquired the domain name <recessionista.com> in 2011 from a domain name acquisition service.  However, the domain name was created much earlier, on June 14, 2008, by another registrant than Respondent, and thereafter remained “parked” until purchased by Respondent.

 

The significance of this chain of events is not only that Respondent did not create or register the domain name in the first instance, but that there was evidently nothing in the surrounding circumstances when Respondent obtained it that should have alerted Respondent to the possible illegitimacy of the domain name, such as a suggestion of a pending or threatened challenge to it. 

 

Moreover, when the domain name was first registered, in June of 2008, Complainant had not yet filed for, let alone received, rights by registration of the trademark on which it rests its claim in this proceeding.  In fairness, therefore, rights tracing to the public registration of its THE RECESSIONISTA trademark cannot be relied upon by Com-plainant as evidence of bad faith on the part of Respondent in registering the domain name <recessionista.com>.

 

As well, the record reveals that Complainant has taken inconsistent positions with re-gard to the meaning to be ascribed to the difference between its THE RECESSIONISTA mark and Respondent’s <recessionista.com> domain name.

 

In this proceeding Complainant insists that the disputed domain name is confusingly similar to its mark, in substance contending that “recessionista” is too close to THE RECESSIONISTA.  But, in prosecuting its application for registration of the mark THE RECESSIONISTA, Complainant argued before the USPTO in 2011 that its inclusion of “the” in the mark was what made the mark distinct from other uses of the phrase “recessionista,” thus justifying its registration.  And, in a separate trademark proceeding in 2012, Complainant filed with the USPTO a Consent to Registration permitting an independent third-party, Us Weekly LLC, to register RECESSIONISTA as a mark, contending that the sole difference between Complainant’s THE RECESSIONISTA mark and the mark RECESSIONISTA, i.e., the single word “the,” sufficiently differ-entiated the two marks. 

 

In any event, a situation closely analogous to this one can be found in the panel de-cision denominated Vacaciones eDreams, S.L. v. BuyDirect Pty Ltd., DAU2011-0043 (WIPO April 3, 2012).  There a respondent acquired a domain name after seeing it appear on a “drop list,” i.e.:  a list containing expired domain names set to be deleted from a domain name registry.  Such lists are typically used to locate available domain names.  The presiding panel noted the significance of the appearance of the domain name on a published drop list, concluding that:  “[t]he Respondent was entitled to take that at face value.”  The same panel went on to find that:  “registration of the disputed domain name was not in bad faith.”  

 

For all of these reasons, we find that Complainant has failed to prove bad faith in the registration of Respondent’s domain name in satisfaction of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having failed to establish an essential element required to be proven under the ICANN Policy, the Panel concludes that the relief requested by Complainant must be, and it is hereby, DENIED.

 

Accordingly, it is Ordered that the contested <recessionista.com> domain name shall REMAIN WITH Respondent.

 

 

Terry F. Peppard, Panelist

Dated:  May 30, 2014