Expensify, Inc. v. Nanci Nette
Claim Number: FA2102001930622
Complainant is Expensify, Inc. (“Complainant”), represented by Kevin Pasquinelli of Robins Kaplan LLP, California, USA. Respondent is Nanci Nette (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expesnify.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2021; the Forum received payment on February 1, 2021.
On February 2, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <expesnify.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 February 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@expesnify.com. Also on February 3, 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 February 26, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Expensify Inc., founded and beginning operations in 2009, automates expense reporting using its patented technology which enables the photo capture of expense receipts—such as credit card slips, odometer readings, and cash receipts—performs optical character recognition on those records, places each in an expense report, and then correlates the expenses with credit card transactions and other bank records.
Complainant has rights in the <expesnify.com> mark based upon its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <expesnify.com> domain name is confusingly similar to Complainant’s EXPENSIFY mark because it merely transposes the letters “n” and “s” in the mark and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <expesnify.com> domain name. Respondent is not licensed or authorized to use Complainant’s EXPENSIFY mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name offer and profit from third-party hyperlinks.
Respondent registered and uses the <expesnify.com> domain name in bad faith. Respondent uses the domain name to attract internet users to its webpage for commercial gain via its hosting of third-party links. Additionally, Respondent’s domain name registration constitutes typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in EXPENSIFY.
Complainant’s rights in EXPENSIFY existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <expesnify.com> domain name to address a webpage that trades on Complainant’s EXPENSIFY trademark by offering pay-per-click links.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the EXPENSIFY mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue <expesnify.com> domain name consists of a misspelled/mistyped version of Complainant’s EXPENSIFY trademark followed by a necessary top-level, here “.com.” In creating the domain name Respondent simply transposes the “n” and “s” in Complainant’s trademark then appends the top-level domain name “.com” to the resulting string. The differences between the at-issue <expesnify.com> domain name and Complainant’s EXPENSIFY trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <expesnify.com> domain name is confusingly similar to Complainant’s EXPENSIFY trademark. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”).
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. 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”).
Respondent lacks both rights and legitimate interests in respect of the <expesnify.com> domain name. Respondent is not authorized to use Complainant’s EXPENSIFY trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Nanci Nette.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <expesnify.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore and as also discussed below regarding bad faith, Respondent is attempting to trade on Complainant’s trademark by diverting internet users looking for Complainant to a webpage ultimately controlled by Respondent. Respondent’s confusingly similar <expesnify.com> domain name addresses a parking page displaying pay-per-click links to third party websites. Respondent’s use of the domain name in this way constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <expesnify.com> domain name was registered and used in bad faith. As discussed below without limitation, circumstance are present which permit the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interests, Respondent’s at-issue domain name addresses a parking page displaying links to third parties. Respondent or a third-party is likely to financially benefit from such links via a pay-per-click arrangement or otherwise. Respondent’s use of the at-issue domain name in this manner demonstrates Respondent’s bad faith registration and use of the <expesnify.com> domain name pursuant to Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Additionally, Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical error or misspelling into a trademark or into a website address and then uses the resulting string in a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when attempting to browse to content related to the domain name’s target trademark/website and/or, 2) in viewing the domain name will confuse the domain name with its target trademark or website. The typosquatting domain name’s registrant may then use the confusion to inappropriately capitalize on the target trademark’s goodwill by taking advantage of internet traffic that was meant for the trademark holder. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Here, Respondent formed the at-issue domain name by transposing two characters in Complainant’s EXPENSIFY trademark and adding a top-level domain name. The resulting domain name is easily confused with Complainant’s EXPENSIFY trademark and Complainant’s official website at <expensify.com>. Upon glancing at Respondent’s <expesnify.com> domain name there is little doubt that some portion of internet user will mistake it for <expensify.com> and/or believe the domain name relates to Complainant. Similarly, some percentage of internet users will predictably but inadvertently transpose the “n” and “s” when attempting to enter Complainant’s trademark into a web browser’s address field. Doing so will result in such users landing on Respondent’s website and being presented with links to advertising links benefiting Respondent or a third party. Respondent’s typosquatting further demonstrates Respondent’s bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expesnify.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 1, 2021
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