Expensify, Inc. v. Chuck Doyle
Claim Number: FA2003001890309
Complainant is Expensify, Inc. (“Complainant”), represented by Kevin Pasquinelli of Robins Kaplan LLP, California, United States. Respondent is Chuck Doyle (“Respondent”), Unknown.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <conclerge-from-expnsify.com>, registered with DreamHost, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2020; the Forum received payment on March 30, 2020.
On April 1, 2020, DreamHost, LLC confirmed by e-mail to the Forum that the <conclerge-from-expnsify.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2020 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@conclerge-from-expnsify.com. Also, on April 6, 2020, 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 April 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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
Complainant, Expensify, Inc., is a service company that automates expense reporting. Complainant has rights in the EXPENSIFY and CONCIERGE marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,229,014, registered October 23, 2012) (e.g., Reg. No. 5,728,191, registered April 16, 2019). Respondent’s <conclerge-from-expnsify.com> domain name is identical or confusingly similar to Complainant’s marks as it combines the EXPENSIFY and CONCEIRGE marks with minor changes as well as hyphens, along with the generic term “from” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interest in the <conclerge-from-expnsify.com> domain name. Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s EXPENSIFY and CONCIERGE marks. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent fails to make an active use of the disputed domain name and instead uses the disputed domain name in furtherance of an email hijacking scheme.
Respondent registered and uses the <conclerge-from-expnsify.com> domain name in bad faith. Respondent uses typosquatting to impersonate Complainant’s employees. Additionally, Respondent uses the disputed domain name in furtherance of an email hijacking and phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Expensify, Inc. (“Complainant”), of San Francisco, CA, USA. Complainant is the owner of domestic registrations for its marks EXPENSIFY and CONCIERGE which it has used continuously since 2007 and 2018 respectively, in connection with its provision of goods and services for downloadable software used in accounting, expense reporting, automating business procedures and related automated processes.
Respondent is Chuck Doyle (“Respondent”), who’s address is uncertain although communication identified as from Respondent was received from Webster, MN, USA. Respondent’s registrar’s address is indicated as Brea, CA, USA. The Panel notes that the disputed domain name was registered on or about January 30, 2020.
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 asserts rights in the EXPENSIFY and CONCIERGE marks through its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registration with the USPTO (e.g., EXPENSIFY - Reg. No. 4,229,014, registered October 23, 2012) (e.g., Reg. No. CONCIERGE - 5,728,191, registered April 16, 2019). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <conclerge-from-expnsify.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates misspellings of Complainant’s EXPENSIFY and CONCIERGE marks along with the addition of the generic term “from”, hyphens, and the “.com” gTLD. A domain name that combines marks and adds the “.com” gTLD is confusingly similar to Complainant’s mark. See Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION TRAINING marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”). Additionally, subtle misspellings and the addition of a term is not enough to negate a finding of confusing similarity. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”). The Panel here finds the disputed domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <conclerge-from-expnsify.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use either of Complainant’s marks. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that 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). The WHOIS information for the disputed domain name shows that the registrant’s name is “CHUCK DOYLE” and nothing in the record indicates that Respondent is licensed to use Complainant’s marks or is known by the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims Respondent fails to use the <conclerge-from-expnsify.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the domain name. A respondent may lack rights or legitimate interests in a domain name where it fails to make any active use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Here, Complainant provides a screenshot to the resovled website which displays a “site not found” error message to support its argument. The Panel here finds that evidence indicative that Respondent fails to use the <conclerge-from-expnsify.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant further argues Respondent fails to use the <conclerge-from-expnsify.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name in furtherance of a fraudulent email scheme. Use of a disputed domain name to impersonate a complainant via email addresses may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant claims that Respondent uses the disputed domain to impersonate Complainant’s employees to send deceptive emails. The Panel here finds Respondent’s actions in that regard are not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent registered and uses the <conclerge-from-expnsify.com> domain name in bad faith. Complainant argues Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent email scheme. Use of a disputed domain name in furtherance of a fraudulent scheme may constitute bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As noted previously, Complainant asserts that Respondent uses the disputed domain to impersonate Complainant’s employees to send deceptive emails. The Panel here finds such activity evinces bad faith registration and use under Policy ¶ 4(a)(iii).
Additionally, Complainant claims Respondent’s use of misspellings of Complainant’s marks in the <conclerge-from-expnsify.com> domain name is evidence of bad faith as it is an example of typosquatting. Typosquatting is evidence of relevant bad faith registration and use. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant argues that Respondent’s registration of the disputed domain name is typosquatting with the intention of impersonating Complainant for commercial gain. The Panel here finds Respondent’s typosquatting is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant notes it is likely that Respondent registered the disputed domain name knowing about Complainant’s rights in the marks. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant argues that Respondent’s registration and use of Complainant’s marks in a phishing scheme indicates Respondent’s knowledge of Complainant’s rights. The Panel here finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered and used the name in bad faith.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <conclerge-from-expnsify.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 14, 2020
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