TuneIn, Inc. v. Mark Elijah
Claim Number: FA2204001991911
Complainant is TuneIn, Inc. (“Complainant”), represented by Brandon M. Ress of King & Spalding LLP, Texas, USA. Respondent is Mark Elijah (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tunein.careers>, registered with NameCheap, Inc..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 11, 2022; the Forum received payment on April 11, 2022.
On April 12, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <tunein.careers> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 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@tunein.careers. Also on April 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it provides a variety of audio streaming services, including live news, radio, sports, music and podcasts to over 75 million monthly active users. Since 2009, Complainant has offered mobile apps and streaming services in connection with the trademark TUNEIN. Today, Complainant’s website and apps allow users to listen to more than 120,000 radio stations from around the world including AM, FM, HD, LP, digital and internet stations, and stream more than four million podcasts. Complainant’s directory lists various sports, news, talk, and music broadcasts from around the world, all available on its service. Complainant’s website is available in 22 languages, each with its own content tailored for the specific language or region. Complainant also offers 5.7 million on-demand programs. Complainant’s service is either natively integrated into, or otherwise accessible by users through, auto infotainment systems, smart speakers, and consumer electronic devices (e.g., Alexa-enabled devices, Sonos speakers, and Tesla automobile models). Complainant asserts rights in the TUNEIN mark through its registration of the mark with multiple trademark agencies around the world, including in the United Kingdom in 2014.
Complainant alleges that the disputed domain name is identical or confusingly similar to its TUNEIN mark as it incorporates the mark in its entirety, merely adding the “.careers” generic top-level domain (gTLD). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized nor licensed Respondent to use the TUNEIN mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. Specifically, Respondent used the disputed domain name in emails to impersonate Complainant and set up phony application and interview processes in which a job seeker was asked for personally identifiable information and told that the company would be “funding or reimbursing you to purchase every equipment you will need from our vendors if hired”. The fraudulent emails referred specifically to Complainant and their signature block displayed Complainant’s business name. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract users for commercial gain by passing off as Complainant via email in furtherance of a phishing scheme. Respondent also had actual notice of Complainant’s rights in the mark, evidenced by Respondent’s use of the mark to pass off as Complainant and the fame of the mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark TUNEIN and uses it to provide a variety of audio streaming services, including live news, radio, sports, music and podcasts.
Complainant’s rights in its mark date back to at least 2014.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name is used in furtherance of a fraudulent email phishing scheme. The fraudulent emails refer to Complainant.
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 disputed domain name incorporates Complainant’s TUNEIN mark in its entirety, merely adding the “.careers” gTLD. Simply adding a gTLD is generally not sufficient to differentiate a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds that the <tunein.careers> domain name is identical Complainant’s TUNEIN mark under Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use the TUNEIN mark. Respondent commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), the Panel may reference WHOIS information to determine whether a respondent is commonly known by a disputed domain name. 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). Here, the available WHOIS information shows that the registrant is “Mark Elijah”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. Specifically, Complainant provides evidence showing that Respondent used the disputed domain name in emails to impersonate Complainant and set up phony application and interview processes in which a job seeker was asked for personally identifiable information and told that the company would be reimbursing them for equipment that they would have to purchase. The fraudulent emails referred specifically to Complainant and their signature block displayed Complainant’s business name. This is not a bona fide offering of goods and services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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)). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent attempts to attract users for commercial gain by passing off as Complainant via email in furtherance of a fraudulent phishing scheme. This is evidence of bad faith registration and use under the Policy. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also CoorsTek, Inc. v. Gwendolyn K Bohn / CoorsTek Inc, FA 1764186 (Forum Feb. 2, 2018) (“Respondent sent email to users seeking employment at Complainant’s business and asked for personal information such as a photo ID. Therefore, the Panel finds Respondent’s emails constitute a phishing scheme and this indicates bad faith registration and use per Policy ¶ 4(a)(iii).”). Therefore the Panel finds bad faith registration and use under Policy ¶¶ 4(a)(iii) and/or (b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the fraudulent emails refer to Complainant. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <tunein.careers> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 9, 2022
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