The recession that followed the 2007 financial crisis may have officially ended in 2009, but the demand for bargains and bargain-hunting tips remains strong. In a World Intellectual Property Organization (WIPO) decision this week, blogger Mary C. Hall, aka The Recessionista, lost her battle for “therecessionista.net”.
As is noted in her decision, WIPO Panelist Angela Fox conducted some Internet research of her own and found that the term “recessionista” is well-defined and established in multiple locations on the Internet. My own search revealed that the word is recognized by the online version of the Oxford Dictionaries and that discount retailer TJMaxx has built a whole campaign around the concept of bargain-hunting fashionistas, dubbing its customers “Maxxinistas”. In fact, the Complainant tweets about TJMaxx deals from her Twitter handle, @Recessionista:
The Complainant has held the registered trademark for The Recessionista since May of 2013 (it was filed in December of 2008). The Complainant’s Twitter feed and her blog at therecessionista.com appear to be updated with new content – including tips about sales and reviews of clothing lines – regularly. As for Respondent’s activity, the archives for content on therecessionista.net appear to date back to the summer of 2012, with the most recent post dated in the fall of 2012. On this blog, the Respondent (identified in the Panel Decision as the “Domain Discreet Privacy Service” but on the site as Kristin Whiting) features items for sale on an eBay page. In her decision the Panelist first finds that the disputed domain name is identical to the Complainant’s trademark. However, she goes on to deny the Complaint citing the Complainant’s failure to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name since her site is used for a budget-conscious shopping site. Despite the existence of Complainant’s trademark registrations, the Panelist refused to decide whether this is actually infringing on the Complainant’s trademark. And finally, with regard to the charge of registration and use of the domain name in bad faith, the Panelist cited the many other (some descriptive) uses of the word “recessionista” and found that “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.”
The two most critical elements of this decision are 1) the Panelist’s rejection of any obligation to decide questions of trademark infringement and 2) her suggestion that the term “recessionista” may actually be descriptive for giving advice on budget-conscious shopping. I find both conclusions rather unsettling since there are many past UDRP cases that turn on questions of trademark infringement but most of these involve famous marks where the infringement is more obvious. As to the second point, the Panelist is actually putting her own judgment of descriptiveness ahead of that of the different trademark offices that granted the Complainant’s various registrations. Regardless of what one might think about the role of Panelists in deciding questions of infringement, it is typically not their role to decide whether a registered trademark is merely descriptive (thus suggesting that the trademark office should not have granted a particular registration).
I agree with the Panelist’s comment that the UDRP was only intended for fairly clear cases of cybersquatting. However, rather than hang her hat on these broad points, the Panelist probably could have done a more detailed comparison of the appearance of the Complainant’s and Respondent’s websites and decided that no copying took place. A lack of copying may have then led one to the conclusion that no bad faith exists.
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