AUGUST Image, LLC v. Jessica Ruzicka / AUGUST IMAGE
Claim Number: FA2209002010970
Complainant is AUGUST Image, LLC (“Complainant”), represented by Andrew J. Avsec of Crowell & Moring LLP, Illinois, USA. Respondent is Jessica Ruzicka / AUGUST IMAGE (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <augustlmage.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, Panelist.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
According to the Registrar, the registration agreement for the Domain Name is written in the Dutch language. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant filed its Complaint in English and requests that the proceedings be conducted in English, claiming that Respondent is proficient in that language. Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.5.1, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language), Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
As stated above, Complainant filed its Complaint in English but the Written Notice of the Complaint, written in both Dutch and English, was served upon Respondent in accordance with Rules 1 and 2. The Domain Name resolves to an inactive website but Complainant presented a number of emails sent from an email address based upon the Domain Name, all of which are written in English by a person who is obviously knowledgeable and familiar with the language. Further, Respondent has not submitted a Response or any indication that it desires to participate in this proceeding, in the Dutch language or otherwise. Inasmuch as neither the complainant nor the Panel is proficient in Dutch, proceeding in that language would involve substantial additional expense and delay for translation. The additional time and expense of proceeding in Dutch would be unwarranted inasmuch as the only party who might benefit from that has declined to participate. For this reason, the Panel determines that this proceeding will be conducted in English.
Complainant submitted a Complaint to Forum electronically on September 6, 2022; Forum received payment on September 6, 2022.
On September 7, 2022, Google LLC confirmed by e-mail to Forum that the <augustlmage.com> domain name (the Domain Name) is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement 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 September 12, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 3, 2022 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@augustlmage.com. Also on September 12, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses 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.
Having received no Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.
On October 11, 2022, the Panel issued a Request for Additional Submission and on October 14, 2022 Complainant responded by filing a Response to the Request and an amended Complaint with Annexes.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an agency which represents photographers for commercial and editorial licensing. It has common law rights in the AUGUST mark through its use of that mark in connection with its business operations since 2012. Respondent’s <augustImage.com> Domain Name is identical or confusingly similar as Respondent incorporates the mark in its entirety, only adding the misspelled word “image” and the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the Domain Name. It is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses it for an email account with which it passes off as Complainant and attempts to defraud Complainant’s clients. Complainant has not authorized or licensed Respondent to use the AUGUST mark, Respondent has not been commonly known by the Domain Name, and the website to which it resolves is not active.
Respondent registered and uses the Domain Name in bad faith. Respondent is using it for fraudulent emails to pass off as Complainant and attempt to defraud Complainant’s clients. Respondent had actual knowledge of Complainant’s rights in the mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
C. Complaint Additional Submission
The content of this Additional Submission is discussed in detail in the Findings below.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
In its original Complaint Complainant alleged that it obtained a federal registration of the AUGUST mark from the USPTO (Reg. No. 4,933,361, registered April 5, 2016), but the USPTO registration certificate submitted as evidence of that (Complaint Annex D) showed another entity, August Worldwide, Inc., as the owner of that registration. The Panel then issued its Request for Additional Submission seeking evidence of any rights Complainant might have in the mark. Complainant responded, saying that it did not own the trademark registration cited in the Complaint, that its inclusion in the Complaint was inadvertent. Complainant stated that it would rely on its common law rights in the mark, as set forth in an amended Complaint filed with Complainant’s Response to the Request.
Policy ¶ 4(a)(i) does not require a complainant to own a registered mark if it can demonstrate common law rights in the mark. Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must prove that the mark has acquired a secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will….”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview 3.0 ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Despite Complainant’s allegations that it has provided services under the AUGUST mark since at least as early as 2012, and that it has developed a cultivated reputation for having deep knowledge of its photograph collections and for providing a high level of customer service, the only actual evidence of its use of that mark consists of three screenshots from The Wayback Machine (amended Complaint Annex H) showing a website resolving from https://www.augustimage.com, which Complainant alleges is its principal website, as it appeared in September 2008, May 2015 and July 2021. While this shows that Complainant was using the mark at those times, it falls far short of providing a factual basis for common law rights in the mark. There is no evidence of the amount of Complainant’s sales under the mark, the nature and extent of its advertising, media attention, or other evidence showing that the relevant consuming public has come to associate the mark with services provided by this Complainant. This is especially significant in light of the fact that another entity registered the AUGUST mark with the USPTO in 2016 (USPTO registration certificate submitted as Complaint Annex D to the original Complaint). On the evidence before the Panel, Complainant has not demonstrated sufficient rights in the AUGUST mark to enable it to bring and maintain this proceeding. It has not met the requirements of Policy ¶ 4(a)(i),
Rights or Legitimate Interests, Bad Faith
As Complainant has failed to meet the requirements of Policy ¶ 4(a)(i), the Panel may decline to analyze the other two elements of the Policy. Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary), Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). The Panel elects to adopt this approach and does not analyze these two elements.
Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED
Accordingly, it is Ordered that the <augustlmage.com> Domain Name REMAIN WITH Respondent. As the Order denying relief is based upon a lack of evidence bearing upon one of the required elements of the case, it is issued without prejudice to the right of Complainant to commence another UDRP proceeding involving this Domain Name supported by competent evidence.
Charles A. Kuechenmeister, Panelist
Dated: October 18, 2022
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