AUGUST Image, LLC v. [Name redacted] / augustimage
Claim Number: FA2208002010056
Complainant is AUGUST Image, LLC (“Complainant”), represented by Andrew J. Avsec of Crowell & Moring LLP, Illinois, USA. Respondent is [Name redacted] / augustimage (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <augustinnage.com>, registered with Google Llc.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on August 29, 2022. Forum received payment on August 29, 2022.
On August 29, 2022, Google Llc confirmed by e-mail to Forum that the <augustinnage.com> 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, which is in Spanish, 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 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@augustinnage.com. Also on September 6, 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 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Google Llc registration agreement is in Spanish. Pursuant to Rule 11(a), the language of the proceeding in relation to the <augustinnage.com> domain name shall be Spanish unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
The Panel notes that the <augustinnage.com> domain name is in English and has been used to send emails in English. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Accordingly, the Panel determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, AUGUST Image, LLC, is an agency service which represents elite portrait, lifestyle, beauty and fashion photographers for commercial and editorial licensing. Complainant has rights in the AUGUST mark based upon registration with the United States Patent and Trademark Office (“USPTO”). The AUGUST mark is prominently featured on Complainant’s website, “www.augustimage.com”. Respondent’s <augustinnage.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <augustinnage.com> domain name. Respondent is not licensed or authorized to use Complainant’s AUGUST mark and is not commonly known by the domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is attempting to pass itself off as Complainant through fraudulent emails purporting to be sent in the name of an employee of Complainant. Furthermore, Respondent is using the domain name to host an inactive website.
Respondent registered the <augustinnage.com> domain name in bad faith with actual knowledge of Complainant’s rights in the AUGUST mark and uses it in bad faith to pass itself off as Complainant in a fraudulent and malicious scheme to achieve unlawful and unauthorized access to valuable copyrighted photographic materials. Respondent’s impersonation of Complainant through its use of the AUGUST Mark is very likely to cause consumer confusion and further promote its malicious scheme. Additionally, Respondent uses the domain name to host an inactive website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules 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; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <augustinnage.com> domain name was registered on July 22, 2022, many years after Complainant acquired rights in the AUGUST mark. It was registered in the name of an employee of Complainant and on July 23, 2022, the domain name was used to send emails purporting to be from that employee, seeking access on behalf of Complainant to valuable copyrighted photographic materials.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <augustinnage.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s AUGUST mark when Respondent registered the <augustinnage.com> domain name and that Respondent has registered and is using the domain name in bad faith for the purpose of fraudulently obtaining valuable copyrighted photographic materials by impersonating Complainant’s employee.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <augustinnage.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: October 13, 2022
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