Expensify, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2104001942074
Complainant is Expensify, Inc. (“Complainant”), represented by Kevin Pasquinelli of Robins Kaplan LLP, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expenseify.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2021; the Forum received payment on April 19, 2021.
On April 20, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <expenseify.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 GoDaddy.com, 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 April 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2021 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@expenseify.com. Also on April 26, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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.
A. Complainant
The Complainant is a global receipt and expense company. Complainant has rights in the EXPENSIFY trademark based on the registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,229,014, registered Oct. 23, 2012). Respondent’s <expenseify.com> domain name is confusingly similar to Complainant’s EXPENSIFY trademark as it simply adds the letter “e” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <expenseify.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the EXPENSIFY trademark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses <expenseify.com> to host pay-per-click hyperlinks.
Respondent registered and uses the <expenseify.com> domain name in bad faith. Respondent uses the disputed domain name to attract users for commercial gain by hosting pay-per-click hyperlinks. Additionally, Respondent engages in typosquatting. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s EXPENSIFY trademark based on the use of the entire trademark in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 4,229,014 EXPENSIFY (word), registered October 23, 2012 for services in class 42.
The disputed domain name was registered on March 6, 2019.
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”).
The Complainant asserts rights in the EXPENSIFY trademark based on registration of the trademark with the USPTO (e.g., Reg. No. 4,229,014, registered Oct. 23, 2012). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Based on the evidence provided by the Complainant, the Panel finds that Complainant has rights in the EXPENSIFY trademark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <expenseify.com> domain name is confusingly similar to Complainant’s EXPENSIFY trademark as it simply adds the letter “e” and the “.com” gTLD to form the disputed domain name.
The addition of a letter and a gTLD to a trademark is insufficient to distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i), especially if such submission is an obvious misspelling a trademark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s EXPENSIFY trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent does not have rights or legitimate interests in the <expenseify.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the EXPENSIFY trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a trademark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant and no evidence suggests that Complainant has authorized Respondent to use the EXPENSIFY trademark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses <expenseify.com> to host pay-per-click hyperlinks. The use of a disputed domain name to host pay-per-click hyperlinks does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business).
Here, Complainant provides a screenshot of the resolving website for the disputed domain name showing various pay-per-click third-party hyperlinks on a parked webpage. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant argues that Respondent registered and uses the <expenseify.com> domain name in bad faith because Respondent uses the disputed domain name to attract users for commercial gain by hosting pay-per-click hyperlinks. Under Policy ¶ 4(b)(iv), using a disputed domain name to host pay-per-click hyperlinks to third-parties is evidence of bad faith. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As noted above, Complainant has provided a screenshot of the resolving website showing various pay-per-click hyperlinks. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent’s bad faith is evidenced by Respondent’s use of typosquatting. Per Policy ¶ 4(a)(iii), purposefully misspelled versions of a complainant’s trademark in a disputed domain name constitute typosquatting, which is itself evidence of bad faith registration and use. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online.
Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Complainant contends that Respondent engages in typosquatting by adding the letter “e” to Complainant’s EXPENSIFY trademark in the disputed domain name to create a common typo. The Panel agrees with the Complainant’s conclusion, and finds bad faith.
Furthermore, Complainant contends that Respondent had constructive and/or actual knowledge of Complainant’s EXPENSIFY trademark based on the use of the entire trademark in the disputed domain name. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the inclusion of a complainant’s entire trademark in the disputed domain name and the use of typosquatting. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
Thus, the Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the EXPENSIFY trademark, and the Panel thereby also finds bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expenseify.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 1, 2021
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