Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina
Claim Number: FA1602001660728
Complainants are Jody Kriss and East River Partners, LLC (“Complainant”), represented by Adam C. Sherman of Vorys, Sater, Seymour and Pease LLP, Ohio, USA. Respondent is Felix Sater / Larissa Yudina (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jodykriss.com>, <jodykriss.net>, <jodykriss.org>, <jodykriss.info>, <jodylkriss.com>, <jodylkriss.net>, <jodylkriss.org>, <jodylkriss.info>, <eastriverpartnersllc.com>, <eastriverpartnersny.com>, <theeastriverpartners.com>, <eastriverpartnersgroup.com>, <eastriverpartners.net>, and <eastriverpartners.info>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2016; the Forum received payment on February 12, 2016.
On February 12, 2016, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <jodykriss.com>, <jodykriss.net>, <jodykriss.org>, <jodykriss.info>, <jodylkriss.com>, <jodylkriss.net>, <jodylkriss.org>, <jodylkriss.info>, <eastriverpartnersllc.com>, <eastriverpartnersny.com>, <theeastriverpartners.com>, <eastriverpartnersgroup.com>, <eastriverpartners.net>, and <eastriverpartners.info> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godad m dy.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 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2016 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@jodykriss.com, postmaster@jodykriss.net, postmaster@jodykriss.org, postmaster@jodykriss.info, postmaster@jodylkriss.com, postmaster@jodylkriss.net, postmaster@jodylkriss.org, postmaster@jodylkriss.info, postmaster@eastriverpartnersllc.com, postmaster@eastriverpartnersny.com, postmaster@theeastriverpartners.com, postmaster@eastriverpartnersgroup.com, postmaster@eastriverpartners.net, postmaster@eastriverpartners.info. Also on February 16, 2016, 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.
A timely Response was received and determined to be complete on March 7, 2016.
Complainant submitted a timely Additional Submission, which was received by the Forum on March 14, 2016.
Respondent submitted an Additional Submission, which was received by the Forum on March 19, 2016.
On March 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
1.Complainant uses the JODY KRISS mark in connection with its real estate development business and the EAST RIVER PARTNERS mark in connection with its real estate management and private equity investment fund management business. Complainant has registered the JODY KRISS trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,735,135, first use in commerce Dec. 31, 1998, filed Sept. 26, 2014, reg. May 12, 2015), which demonstrates rights in the mark. See Compl., at Attached Annex D. Complainant has also registered the EAST RIVER PARTNERS mark with the USPTO (Reg. No. 4,711,210, first use in commerce Sept. 19, 2010, filed July 10, 2014, reg. Mar. 31, 2015). See Compl., at Attached Annex B. Complainant also registered the design plus-words mark EAST RIVER PARTNERS mark with the USPTO ( Reg. No. 4715227, reg. April 7, 2015) which has been used in commerce for private equity investment fund management services since July 12, 2011. See Compl., at Attached Annex C.
2.Respondent’s <jodykriss.com>, <jodykriss.net>, <jodykriss.org>, <jodykriss.info>, <jodylkriss.com>, <jodylkriss.net>, <jodylkriss.org>, and <jodylkriss.info> domain names are confusingly similar to Complainant’s JODY KRISS mark because they each incorporate the mark entirely and add a generic top-level domain (“gTLD”) “.com,” “.org,” “.info,” or “.net.” Several of the domain names also include the letter “l” between “jody” and “kriss.”
3.Respondent’s <eastriverpartnersllc.com>, <eastriverpartnersny.com>, <theeastriverpartners.com>, <eastriverpartnersgroup.com>, <eastriverpartners.net>, and <eastriverpartners.info> domain names are confusingly similar to Complainant’s EAST RIVER PARTNERS mark as they also each incorporate the mark in its entirety and add one of the aforementioned gTLDs. One of the domain names include the letters “ llc”, one includes the geographic term “ny” and one includes the generic word “group”. None of those features detract from the confusing similarity between the domain names and the trademark.
4.Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the disputed domain names. Rather, the domain names resolve to websites that are not legitimate criticism sites but are designed, by their registration and renewal of the registration upon expiration, to disparage Complainant and disrupt its business. Respondent attempts to pass off the websites as belonging to Complainant by instituting a similar color scheme, design and logo.
5.Respondent registered and is using the disputed domain names in bad faith. Respondent has engaged in a pattern of domain name misuse through its registration of fourteen domain names containing Complainant’s mark. Respondent’s use of the domain names serves as a disruption of Complainant’s legitimate business purposes. Respondent used the confusingly similar domain names to host websites containing false and harmful allegations about Complainant designed to disparage Complainants. Finally, Respondent used a privacy shield to register each of the domain names.
B. Respondent
Respondent made the following contentions.
1. Both of the Complainants are simultaneously asserting rights in two unrelated alleged trademarks, JODY KRISS and EAST RIVER PARTNERS, which are trademarks registered by separate parties (the first trademark by Jody Kriss and the second trademark by East River Partners, LLC).
2. The Complainants are separate entities and cannot simultaneously file a single Complaint asserting separate trademark rights.
3.The Complainants must also prove that the disputed domain names are confusingly similar to “a” single mark as well as that the Respondent has no rights or legitimate interest in the Disputed Domains, which Complainant has not, and cannot, prove.
4. Respondent’s registration of the <jodykriss.com>, <jodykriss.net>,
<jodykriss.org>, <jodykriss.info>, <jodylkriss.com>, <jodylkriss.net>, <jodylkriss.org>, <jodylkriss.info>, <eastriverpartners.net>, and <eastriverpartners.info> domain names on July 10, 2012, predates Complainant’s filing of a trademark with the USPTO.
5. Respondent’s registration of the <eastriverpartnersllc.com> on August 13, 2014 and the registration of the <eastriverpartnersny.com>, <theeastriverpartners.com>, and <eastriverpartnersgroup.com> domain names in December 2014 predates the registration of Complainant’s trademark with the USPTO.
6.Complainant has not established common law trademark rights prior to the registration of the trademarks and Complainant therefore has no trademark to rely on in this proceeding, the consequence of which is that the Complaint must fail.
7. “Each of the Disputed Domains resolves to a website with information critical of Jody Kriss and/or East River Partners.”
8.Accordingly, Respondent could not have registered the domain names in bad faith and Complainant thus cannot succeed on the issue of bad faith or on the Complaint as a whole.
9. Complainant has failed to satisfy its burden under the Policy, and therefore the Panel should find Respondent has a right or legitimate interest in each of the domain names and that Respondent has not acted in bad faith.
10.Complainant has acted in bad faith and has engaged in reverse domain name hijacking by filing the Complaint.
C. Additional Submissions
Complainant
Complainant made the following further contentions in its timely Additional Submission.
1. Complainant Kriss and Complainant East River Partners LLC have interests that are aligned and singular and should be permitted to proceed joined in this matter as Complainants.
2. Respondent failed to provide evidence that the two nominal registrant names, which shared an email address and identical registration dates of the domain names they registered were in fact two people rather than a single registrant using two names, as Complainant contends. The Panel should therefore find that they are the same person or entity using aliases and the Complaint should be allowed to proceed in its present form.
3. Respondent’s motive for posting defamatory content on the websites of the disputed domain names was revenge. Respondent Felix Sater was sued by Complainant Kriss in 2010, and the litigation is ongoing. Attached to Annex O is an email to one of Complainant Kriss’s business associates in which the sender threatened to defame online a co-plaintiff in the litigation. The sender included a link to the website located at <jodykriss.net> with the warning: “See your friend and co-plaintiffs’ new lifetime online reality. If you choose to continue with this extortion, It will also be your new online reality for the rest of your life.” See Compl., at Attached Annex O, Ex. 1.
4. Accordingly, Respondent cannot rely on the point that the domain names were registered and have been used to support a gripe or criticism site which gives rise to a right or legitimate interest in the domain names.
5. Moreover, Respondent has virtually assumed the name of Complainant trademark owner by registering domain names that carry the name of one or the other of Complainants with no substantial alteration and has caused potential confusion among internet users by the composition of the websites to which they resolve .Those facts prevent Respondent from establishing a legitimate use based on free-speech criticism.
6. Respondent renewed the registration of the domain name registrations on June 15, 2015 and October 9, 2015, which was subsequent to the registration of the trademarks. Accordingly, Complainant is able to contend successfully that Respondent registered and used the domain names in bad faith as they were registered and renewed and have been used to disparage Complainants and to disrupt their business, in breach of the Policy and in particular paragraph 2 of the Policy and by updating and changing the content of the websites. See Compl. at Attached Annex B.
7. Respondent has also established common law trademark rights in the JODY RICH and EAST RIVER PARTNERS marks which acquired secondary meaning before the federal trademarks were registered.
Respondent
Respondent made the following further contentions in its Additional Submission.
1. Complainant’s submissions are without merit and must fail as it is not a violation of the Policy to post disparaging content on the Internet. In particular, gripe sites
are a legitimate use of domain names.
2. Complainants have initiated litigation against the named Respondents in federal
court, which litigation has become protracted, and the Complainants did not notify the Panel of this in their Complaint. As this litigation involves many of the same issues, the present UDRP should be stayed.
3. Complainants have not established common law trademark rights to the KRISS and the EAST RIVER PARTNERS trademarks.
4. Complainants are not entitled to seek recovery a plurality of domain names incorporating a plurality of differing marks.
The Panel has accepted both Supplementary submissions and taken them into account in its decision.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants, Jody Kriss and East River Partners, LLC. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainant Kriss and Complainant East River Partners submit that there is sufficient connection to allow the complainants to be joined in the one proceeding. The Panel agrees with Complainant on that issue for the following reasons.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
Taking these opinions into account, the Panel takes the view that if it can be established that there is a nexus or link between the two complainants, the Panel may treat them as a single entity and hence as an entity that may initiate the proceeding by submitting a complaint, within the meaning of Rule 3(a).
The Panel accepts that the evidence in the Complaint is sufficient to establish the required sufficient nexus or link between the Complainants and it will therefore treat them all as a single entity in this proceeding. That evidence comes from the Complaint, Complainant’s supplementary submission and the declaration by Mr Kriss, the first Complainant. It is the evidence that Complainant Kriss is the principal and an owner of Complainant East River Partners, LLC, which is a real estate and financial services corporate business that Complainant Kriss manages. In his declaration, Kriss states among other things that since 2010 he has spoken at real estate events and conferences promoting the company and that he has distributed literature carrying its name and trademarks and made presentations on behalf of the company. It appears from the evidence that there is a commonality of interest between Kriss and the company and that he is largely its alter ego and public face. At the very least, therefore, there is definite link and nexus between Kriss and the company and it is somewhat artificial to contend the contrary.
The panel therefore concludes that both complainants have standing to bring the proceeding and it will allow the proceeding to continue in that form. They will both be referred to as “Complainant” in this decision for reasons of convenience.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The question also arises whether the proceeding can be brought against two Respondents and deal with several domain names.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.
The evidence is that several of the domain names are registered to Felix Sater and several are registered to Larissa Yudina, so the starting point is that there are two apparent registrants. Complainant contends, however, that they are the same person or entity. Complainant supports that position by contending and establishing that the websites to which the various domain names resolve contain substantially similar or identical content to each other, that ten of the disputed domain names were registered on the same day, that both named registrants have the same email address, and that the WHOIS record reveals all fourteen of the disputed domain names have the same registrar and have used the same privacy service. See Compl., at Attached Annex A. Complainant further contends that Felix Sater registered all of the domain names, using the alias “Larissa Yudina” for the domain names containing Complainant’s EAST RIVER PARTNERS mark.
The evidence just described is compelling and shows at least on the balance of probabilities that the two persons or entities are either the same or are jointly controlled. The Panel therefore finds that the disputed domain names are commonly owned and/ or controlled by a single registrant under the guise of the two named Respondents using multiple aliases. The proceeding may therefore continue in its present form and the Panel will refer to “Respondent” meaning the single registrant using multiple aliases.
1. Complainant East River Partners, LLC. is a United States company engaged in the business of real estate management and private equity investment fund management and Complainant Jody Kriss is an individual who is the founder and an owner of East River Partners, LLC.
2. Complainant Kriss has registered the JODY KRISS trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,735,135, first use in commerce Dec. 31, 1998, filed Sept. 26, 2014, reg. May 12, 2015), which demonstrates rights in the mark. Complainant East River Partners LLC. has registered the EAST RIVER PARTNERS mark with the USPTO (Reg. No. 4,711,210, first use in commerce Sept. 19, 2010, filed July 10, 2014, reg. Mar. 31, 2015) which demonstrates rights in the mark.
3. Complainants have also established common law trademark rights to the KRISS and EAST RIVER PARTNERS marks.
4. Complainants have established sufficient connection and nexus with each other to allow them to be joined in the one proceeding as Complainant and consequently have established standing to bring the administrative proceeding.
5. The administrative proceeding may validly be brought against both named Respondents and may proceed with respect to the several domain names specified in the Complaint.
6. The disputed domain names are confusingly similar to the KRISS and EAST RIVER PARTNERS trademarks.
7. Respondent has no rights or legitimate interests in the disputed domain names.
8. The disputed domain names have been registered and used in bad faith.
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.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the JODY KRISS mark in connection with its real estate development business and related activities and the EAST RIVER PARTNERS mark in connection with its real estate management and private equity investment fund management business and related activities. Complainant submits and has established by evidence that it registered the JODY KRISS trademark with the USPTO (Reg. No. 4,735,135, first use in commerce Dec. 31, 1998, filed Sept. 26, 2014, reg. May 12, 2015), which Complainant contends demonstrates rights in the mark. See Compl., at Attached Annex D. Complainant has also registered the EAST RIVER PARTNERS mark with the USPTO (Reg. No. 4,711,210, first use in commerce Sept. 19, 2010, filed July 10, 2014, reg. Mar. 31, 2015). See Compl., at Attached Annex B. Previous UDRP Panels have found that a trademark registration with the USPTO or other national authority demonstrates rights in a mark for the purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Panels have also found that relevant rights in a registered mark date back to such a mark’s filing date of record. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has established registered trademark rights in the JODY KRISS and EAST RIVER PARTNERS marks and that they date back to the filing date of the registrations.
Complainant further contends that it holds common law trademark rights in the JODY KRISS and EAST RIVER PARTNERS marks. Respondent has submitted in its Supplementary submission that Complainant has raised the issue of common law trademarks as a new line of argument too late and only in its Supplementary submission. However, Complainant must have given sufficient notice to Respondent that this was a potential issue as early as the service of the Complaint, as Respondent itself submitted in the Response that Complainant had not established common law trademark rights. That being so, Complainant was entitled to advance its argument on that issue in its Supplementary submission. It is also in the interests of a prompt resolution of this dispute that the Panel should now decide all issues, including the issue of common law trademark rights.
Complainant contends that its longstanding and extensive use of the marks in commerce prior to the registration of the contested domain names gives it common law rights in the marks prior to the registration of the trademarks. Complainant contends that it has common law rights in the mark JODY KRISS, pointing to an article on Respondent’s website at <jodykriss.com> that refers to Complainant Kriss’s “17-year-career,” says he is “even well-known in parts of Florida,” and that he co-founded “East River Partners real estate company in 2010.” See Compl., at Attached Annex P. Another article on the same website said “a lot has been written and said about the infamous Jody Kriss.” Id. Complainant contends that by these statements Respondent conceded that the JODY KRISS mark and EAST RIVER PARTNERS marks were well known and valid and had acquired secondary meaning prior to the registration of any of the disputed domain names. Previous UDRP Panels have found common law rights to be sufficient in establishing rights in a mark, and that common law rights may be established via evidence of a secondary meaning in a mark. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). The Panel finds that Complainant has provided sufficient evidence to show secondary meaning in both marks and to establish common law rights in the JODY KRISS and EAST RIVER PARTNERS marks. As to when those trademark rights were established, the evidence shows that they were established well prior to the registration of the two registered trademarks on March 31, 2015 in the case of the EAST RIVER PARTNERS mark and May 12, 2015 in the case of the JODY KRISS trademark. The EAST RIVER PARTNERS rights were in all probability established at or shortly after September 20, 2010 when East River Partners, LLC was formed as a Delaware limited liability company. The JODY RICH rights were in all probability established before that time, and Respondent has in effect conceded that Rich was well known and renowned in real estate services as of May 10, 2010. Those rights were established prior to the registration on the disputed domain names on July 10, 2012, August 13, 2014 and December 19, 2014.
The second issue that arises is whether the disputed domain names are identical
or confusingly similar to Complainant’s JODY KRISS and EAST RIVER
PARTNERS marks. The Panel finds, first, that the <jodykriss.com>,
<jodykriss.net>, <jodykriss.org>, <jodykriss.info>, <jodylkriss.com>,
<jodylkriss.net>, <jodylkriss.org>, and <jodylkriss.info> domain names are confusingly
similar to its JODY KRISS mark because each of the domain names incorporates the
JODY KRISS mark entirely and merely adds a gTLD“.com,” “.org,” “.info,” or “.net.”
Several of the domain names also include the letter “l” between “jody” and “kriss.”
However, such minor spelling alterations have been held on many occasions not to
diminish or negate a showing of confusing similarity that is otherwise present, as it is in
the present case.
Respondent’s <eastriverpartnersllc.com>, <eastriverpartnersny.com>,
<theeastriverpartners.com>, <eastriverpartnersgroup.com>,
<eastriverpartners.net>, and <eastriverpartners.info> domain names are confusingly
similar to Complainant’s EAST RIVER PARTNERS marks as they each incorporate the
EAST RIVER PARTNERS mark in its entirety and add one of the aforementioned
gTLDs. Some of these domain names include the generic terms “group” and “llc.” One
includes the geographic term “ny.” The word “group” indicates a group of companies and
the domain name incorporating that word would be taken by internet users to be
referring to the activities of Complainant as a member of a group of companies. The
letter “llc.” indicate incorporation and the domain name in question and would therefore
be taken to refer to the activities of Complainant as a company. The letters “ny” indicate
New York where Complainants operate their businesses and the domain name in
question therefore would be taken by internet users to refer to the activities of
Complainant in New York where it is known to operate. Past Panels have found such
alterations to marks when incorporating them into domain names to be insufficient in
overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also
Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The
mere addition of a single letter to the complainant’s mark does not remove the
respondent’s domain names from the realm of confusing similarity in relation to
the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Dollar Fin. Grp.,
Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of
‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to
the JODY KRISS and EAST RIVER PARTNERS marks respectively under Policy ¶
4(a)(i).
Respondent argues that its registration of the disputed domain names predates Complainant’s alleged rights in the marks. However, the Panel finds, in keeping with well established practice and a proper interpretation of the Policy that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain names are identical or confusingly similar to Complainant’s marks. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Complainant has made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s JODY KRISS and EAST RIVER PARTNERS marks and to use them in its domain names and has made only minor amendments to them set out in more particularity above which suggest that the domain names are referring to Complainant, its trademarks and business activities;
(b) Respondent registered the disputed domain names on various dates also set out above;
(c) The domain names resolve to websites that use the marks and specifically refer to Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e)Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information regarding the domain names lists “Felix Sater” as registrant of the domain names containing the JODY KRISS mark and “Larissa Yudina” as registrant of the domain names containing the EAST RIVER PARTNERS mark. See Compl., at Attached Annex A. Complainant contends that “Larissa Yudina” is an alias of Felix Sater, since the two registrants share the same email address and many of the domain names were created on the same day, but, regardless, the registrant names listed do not show Respondent to be commonly known by the disputed domain names. Id. Complainant also asserts that it has not given Respondent permission to use the JODY KRISS and EAST RIVER PARTNERS marks. The Panel therefore finds that there is no basis to find that Respondent is commonly known by the disputed domain names. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Accordingly, the Panel finds that Complainant has established the prima facie case required. It thus remains to be seen whether Respondent has rebutted the prima facie case against it.
The primary case advanced by Respondent to rebut that case is that the domain names have been registered with the intention of using them for criticism sites and that they have been used for that purpose, giving it a right or legitimate interest in the domain names. As Respondent put it: “Each of the Disputed Domains resolves to a website with information critical of Jody Kriss and/or East River Partners.” In effect, Respondent argues that this intention and the subsequent use of the domain names shows that it is using them for a legitimate noncommercial or fair use of the disputed domain names within the meaning of the Policy.
The Panel does not accept that submission.
“From the standpoint of determining whether Respondent is engaged in legitimate non-commercial use of the disputed domain name, the basic question is whether Respondent is justified in (a) calling itself “Sutherland Institute” in the disputed domain name, and (b) creating a website with the evident purpose of causing Internet user confusion regarding whether its website is operated by Complainant, until a close examination of the website contents should (but apparently does not always) reveal that it is not operated by Complainant.”
On the first point, it is clear that Respondent had no right to call itself Jody Kriss or East River Partners as it has done by registering domain names that incorporate the whole of Complainant’s names and trademarks and where the alterations it has made to create the domain names do not detract from that impression but, if anything, emphasize it. As has already been noted, including the personal Complainant’s middle initial, identifying the corporate Complainant as a company or as part of a group or suggesting that it operates in New York, where it is well known that the company conducts its business, do nothing to suggest that these are not the domain names of Complainant but emphasizes that they are exactly that. Apart from those small amendments, there is nothing in the domain names themselves to suggest that they are not the domain names of the trademark owner and everything to imply that they will lead to its own website.
“The present Panel takes a similar view to that outlined by the panel in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 on the question of rights and legitimate interests in domain names used for the purposes of criticism websites. In that case, the panel commented: “In the view of the Panel there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Domain Name enables the Respondent to transmit his views more effectively is neither here nor there. Depriving the Respondent of the ability to deceive internet users by his use of the Domain Name does not in any way deprive him of his right to free speech. He could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception.”
In any event, the principle just mentioned applies only in a case where there is legitimate criticism on the website to which the domain name resolves and, as will be seen later, this is not a case where the registrant intended to engage in legitimate criticism or, if that was its intention, that it was put into practice.
Nor can Respondent in the present case show that it was justified in “creating a website with the evident purpose of causing Internet user confusion regarding whether its website is operated by Complainant, until a close examination of the website contents should (but apparently does not always) reveal that it is not operated by Complainant.” In the present case, Respondent has adopted features of Complainant’s own website which must initially generate some confusion as to whether the websites are those of Complainant.
As Complainant has correctly submitted, the decision in Milstein v. Doherty, Case No. FA1511001647496 (Nat. Arb. Forum January 11, 2016) is analogous on both points and the panel[2]noted that the use of the complainant’s trademark in the domain name <adammilstein.com>, “with no additions or qualifications at all and no indication in the wording of the domain name that it is a criticism site” could not establish “a legitimate interest in the disputed domain name[.]”.
Accordingly, the panel finds that Respondent has not, on the evidence, shown that it has a right or legitimate interest in the domain names themselves.
There is, however, an additional reason why, in the present case, Respondent’s use of the domain names for its websites is not a legitimate or fair use. The end objective of this exercise must be to persuade the Panel that the site and hence the purpose in registering the domain names was to engage in legitimate criticism and that Respondent actually used the domain names for that purpose. On the evidence available to the Panel, this was not the case. A criticism site does not become one merely by asserting that it is, just as a fan site does not become one simply by carrying material about its subject, if its real purpose is something different, for example by using the site for commercial purposes. In the Panel’s view the present case is not one of criticism but one where the site is clearly intended for denigration and disparagement, and probably as Complainant submits, revenge, by means of using extreme language, up to and including an allegation of murder. To illustrate this, the Panel will include here some extracts from some of the relevant websites as set out in Complainant’s supplementary submission, to illustrate the nature of the contents of the sites, as follows:
“JODYKRISS.COM: The headline of the February 27, 2016 article is “JODY KRISS AND EAST RIVER PARTNERS: PUTTING PEOPLE’S LIVES IN DANGER”; the January 16, 2016 article contains an altered image of Complainant Kriss and refers to him as a “Russian Mobster” and repeatedly attempts to connect him with Russian mob activities. See Annex P.
JODYKRISS.NET: The February 28, 2016 article accuses Complainant Kriss of performing renovations “dangerous to tenants” in a building “proven for being contaminated with high amounts of asbestos.” The article also accuses both Complainants of actually bringing into the building “lower walls painted using lead paints[.]” Complainant Kriss is further called an “extortionist,” and the article implies that Complainant Kriss “kill[ed] another business partner[.]” See Annex Q.
JODYKRISS.ORG: At the time of filing UDRP, the website contained a January 19, 2016 article referring to Kriss as “The Thief-In-Law” and accusing him of “extortion,” “tampering with construction,” and “money laundering.” See Annex C (containing the first page of all domains). Currently identical to JODYLKRISS.COM.
JODYKRISS.INFO: This site again accuses Complainant Kriss of affiliation with the Russian mob, and accuses him of “extortion and blackmail attempts.” (The website is currently no longer active).
JODYLKRISS.COM: At the time of filing this UDRP, the website contained “An Abridged History of Jody Kriss,” calling Kriss a gangster and accusing him of embezzlement and bribery. See Annex C. Currently collects re-posts of numerous negative articles and information about Complainants. See Annex R.
JODYLKRISS.NET: The header of site states: “Jody L. Kriss MOBSTER AND SERIAL LITIGATOR, BLACKMAILER, EXTORTIONIST, BILLION-DOLLAR PLAINTIFF” The March 3, 2016 article as a headline “Organized Embezzlement From Jody Kriss, East River Partners’ Thief-In-Law” and accuses Complainant Kriss of having ties with the Russian mob and further accuses Complainant Kriss of extortion, using violence, and criminal activity. See Annexes C and S.
JODYLKRISS.ORG: Refers to Complainant Kriss as “The Russian Thief In Law,” and further states “Kriss admits to doing business with men who run organizations making their money through contract murder, gun trafficking, prostitution, extortion, and other heinous acts.” The same article also accuses Complainant Kriss of using lead paint in project, using substandard materials, and cutting costs “at the expense of building safety.” See Annex C.
JODYLKRISS.INFO: This site links to a YouTube video containing a fake news story about Complainant Kriss, making numerous false and derogatory statements about Complainant Kriss. See Annex C and http://www.youtube.com/watch?v=5Scn0C7SyNI
EASTRIVERPARTNERSLLC.COM: This website makes reference to “secrets” of Complainant East River, and links to some of the above websites. The website also references a lawsuit regarding “unhealthy living conditions in [Complainant East River’s] buildings,” which is, at best, highly misleading. See Annex C.
EASTRIVERPARTNERSNY.COM: The headline of the website says “Jody Kriss and East River Partners, Mafia mainstays in Manhattan, New York City.” The March 10, 2016 article accuses Complainant Kriss of “blackmailing” his former employer and “stealing [its] secret information….” See Annexes C and T.
THEEASTRIVERPARTNERS.COM: The headline of the site accuses East River of “Hiding Cash [and] Accepting Bribes From the Russians.” The site also refers to Kriss as “‘the extortionist ex-CFO.’” See Annex C.
EASTRIVERPARTNERSGROUP.COM: This website uses a graphic similar to the EAST RIVER trademark and refers to Complainant Kriss as a “mobster, and extortionist at large.” The March 9, 2016 article states that Complainant Kriss “admitted to being involved with the Russian mob and helped them for a period of seven years.” See Annex C and U.
EASTRIVERPARTNERS.NET: Redirects and identical to JODYKRISS.COM.
EASTRIVERPARTNERS.INFO: Mimics the actual East River Partners’ website (www.eastriverpartners.com), even including the exact “East River®” trademark, further stating that Complainant East River was “founded by Russian mob member, extortionist, blackmailer, and serial litigator Jody Kriss[.]” The website also accuses Complainant Kriss of stealing a corporate hard drive and blackmail. Compare Annex J to Annex K.”
The only conclusion the Panel can draw from an examination of this material, none of which is covered by a qualification, is that it is not legitimate criticism, but abuse and that it was devised to damage Complainant and its business and personal interests.
Moreover, the fact that Respondent has registered so many domain names when one alone would be sufficient for Respondent to advance whatever criticism he wished to make, suggests that the real purpose in registering and using the domain names was not as a criticism site but to prevent Complainant from registering domain names that reflected its own names, obstruct and disrupt Complainant’s legitimate business and abuse it.
None of that amounts to legitimate criticism at all and Respondent cannot rely on it to show that it was using the domain names in a legitimate or fair manner.
Moreover, apart from the lack of any apparent substance to the submission that Respondent is engaging in protected criticism, respondents may not use an identical or confusingly similar domain name to exercise such rights. Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”). Therefore, as the Panel finds that the domain names are confusingly similar under Policy ¶ 4(a)(i), the Panel also finds that Respondent is not making a legitimate non-commercial use of the disputed domain names.
Respondent has not sought to show that there is any other basis for showing that it has rights or legitimate interests in the domain names or any of them.
Accordingly, Respondent has not rebutted the prima facie case against it and Complainant has succeeded in establishing that Respondent has no rights or legitimate interests in the domain names.
Complainant has thus shown the second of the three elements that it must prove.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s holding of the domain names to host websites that make such extremely derogatory statements about Complainant, as Respondent has done in this case, is bad faith. Respondent in reply relies on the submission that “Each of the Disputed Domains resolves to a website with information critical of Jody Kriss and/or East River Partners.” In its Additional Submission, Respondent puts it that: “It is not a violation of the Policy to post disparaging content on the Internet.” It also puts it that: “Simply posting disparaging content, particularly directing attention to litigation pleadings and litigation summaries, has never been bad faith use under the Policy, and these disputes are outside the scope of the Policy.” The Respondent concludes that “ ... gripe sites are legitimate use.”
It is true that gripe sites may give rise to a legitimate use and negate the notion of bad faith[3], but as has already been pointed out there must be doubt whether the sites in question in this case are gripe or criticism sites at all, as the content goes far beyond what is normally regarded as criticism and is more akin to abuse and with the obvious intention to damage Complainant’s business and trademarks. As was noted in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No: D2002-0823:
“Freedom of speech must be balanced with some degree of control, manner and regulation to avoid the arising of abuses; limits must be set.” In the present case, it is very apparent that Respondent has not exhibited any such balance and that there were no limits to which Respondent would not go to denigrate Complainant and do damage to it under the guise of using domain names that incorporate Complainant’s trademarks and give the false impression that they are domain names of Complainant.
The following remarks by the same panel are equally applicable to the present case:
“It is here that Respondents’ free speech arguments fail. Respondents may have a valid basis to denigrate Complainants, but having failed to allege any basis for their slurs on their website, Respondents have not demonstrated that use of their Domain Names is legitimate. See Hunton & Williams v. American Distribution Systems, Inc. et al., Proceeding No. D200-0501. Respondents having failed to provide a better explanation (or any explanation) other than that they sought to tarnish Complainants and their trademarks, Panel finds that Respondents have not engaged in legitimate non-commercial or fair use of the Domain Names, nor have they shown a lack of bad faith sufficient to negate Complainant’s showing of bad faith use and registration.”
Moreover, as was noted in Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the intention and motive of the registrant is important in assessing these matters. As has already been pointed out, the material shows that at least a major purpose in registering and using the domain names, as well as to denigrate Complainant, was to corner the market in domain names reflecting Complainant’s names and trademark to disrupt Complainant’s business and inflict as much harm on it as possible.
For example, the decision in Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) is instructive. In that case Respondent registered the domain name <cogema.com>, an exact copy of the complainant’s trademark and used it for an attack on the respondent which was engaged in the nuclear industry. Although UDRP decisions are not precedents it is significant that the panelist in that case held that although the respondent’s website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” .The panelist accordingly held that the disputed domain name was registered and used in bad faith. The following remarks of the panel are also readily applicable to the present case:
“In short, what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website.”
Likewise, “… while the Panel recognizes the Respondent’s right to campaign and to conduct its campaigns by way of the internet, the Domain Name is not necessary for that purpose.” Respondent in the present case could have registered one domain name instead of the fourteen that it registered and could also have chosen a domain name that made it plain to internet users that it was not the domain name of Complainant but did neither and with no explanation for not doing so.
Accordingly, the Panel holds that the conduct of Respondent at issue in this case constitutes bad faith.
However, Respondent also submits that in view of the respective timing of the registration of the domain names and Complainant’s trademarks, that conduct does not constitute bad faith registration and use of the domain names within the meaning of the Policy. Respondent contends that as various groups of the disputed domain names were registered on July 10, 2012, August 13, 2014 and in December 2014 and as those dates predate the registration of Complainant’s trademarks on March 31, 2015, April 7, 2015 and May 12, 2015, Respondent could not have registered the domain names in bad faith. It is true that it has generally been accepted that to form the necessary bad faith intent, a respondent must have registered a disputed domain name after the relevant complainant’s trademark itself was registered. There has been a great deal of debate on this principle and how to rationalize it with paragraph 2 of the UDRP, which it can be assumed ICANN intended should be complied with and which applies expressly to both the registration and renewal of registrations and provides a continuing obligation on registrants of domain names not to “infringe upon or otherwise violate the rights of any third party”, including, clearly a complainant trademark owner in the position of the present complainant. The history of that debate is conveniently set out in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 and the Panel as presently constituted has had occasion to consider it in Saratoga Publishing LLC v. Rich Richbart / Saratoga Online Inc, FA1503001608704 ( Nat. Arb. Forum, April 27, 2015) and Adam Milstein v. Benjamin Doherty, : FA1511001647496 ( Nat. Arb.Forum, Jan 11,201). As the Panel[4] said in Milstein,
“The question still remains whether on the particular facts of this case the renewal should be regarded as a registration. This is a difficult question to answer and the Panel has again found helpful the reasoning in the Eastman Sporto case which found that the renewal in that case should be regarded as a registration. In Eastman Sporto, the registrant had changed the content of the website to “textbook cybersquatting”, so the panelist found that the renewal was an act of bad faith registration. In the Saratoga Case, the registrant had done nothing with the domain name before or after the renewal, leading to the finding that there had been no bad faith registration.”
In the present case, however, as in Milstein, some of the offending conduct of Respondent took place after the renewal of the registration of the domain names. The evidence in the present case is that the renewal of the registration of the domain names took place in most cases on June 15, 2015 and in two cases on October 9, 2015. The evidence set out in some detail above shows that after the trademarks were registered and after the domain names were registered there were new derogatory statements posted about Complainants as part of the sustained and continued denigration of Complainant in extreme terms that seem to have no limits. It shows a continuing and renewed intention to denigrate Complainant and tarnish its trademarks, and all under the coverage of a series of domain names that were confusingly similar to the trademarks and none of which were necessary for Respondent to own to promote its views; if it wanted to do this on the internet, it could have done so by registering domain names that did not falsely imply they were Complainant’s own trademarks. In these circumstances, it is clear that there was an intention to act in bad faith towards Complainants at all relevant times, even after the renewal of the registrations. Clearly this was bad faith at the time of the renewal of the registrations, in breach of paragraph 2 of the Policy and also bad faith use as the same conduct has continued.
Accordingly, Complainant, in the particular circumstances of this case, is able to show bad faith registration for the purposes of the Policy by reference to the registered trademarks.
In any event, the Panel has found that Complainant acquired common law trademarks in JODY RICH and EAST RIVER PARTNERS. The evidence shows, as summarized in Complainant’s Supplementary submission and referring to a declaration by Complainant Kriss, one of the complainants and the founder and an owner of the East River Partners Complainant, that Complainant used East River Partners brand and name as the mark of its business of providing real estate and development services since at least September 20, 2010 when the company was incorporated. The same evidence shows considerable detail of other actions taken by Complainant to promote the names and their media and public recognition. The same evidence leads to the same conclusion in so far as the Complainant Kriss is concerned .The evidence is that as well as being the alter ego and public face of East River Partners, Kriss provided services under his own name and has been recognized as such, although he had probably established common law trademark rights in his name earlier than the year 2010.
Accordingly, the Panel finds that the acts of bad faith committed by Respondent were commenced and continued well after Complainants acquired their common law trademark rights and undoubtedly with actual knowledge in Respondent of the existence and prominence of both complainants, their trademarks and their businesses. That finding has importance with respect to the domain name <eastriverpartnersgroup.com> the renewal of which may not yet have been effected. However, the disparaging statement on the website to which that domain name resolves, namely that Complainant Kriss “admitted to being involved with the Russian mob and helped them for a period of seven years”, was posted on March 9, 2016, years after Complainant acquired its common law trademark rights.
In addition, the case falls squarely within two other specific provisions of Policy ¶ 4(b). Complainant contends that Respondent has a pattern of domain name misuse as evinced by the registration of fourteen domain names containing Complainant’s trademarks in the present dispute. The Panel agrees with Complainant and holds that the registration of multiple infringing domain names, in appropriate circumstances and in the present case, demonstrates bad faith under Policy ¶ 4(b)(ii) as it shows an intention to prevent the trademark owner from reflecting its marks in corresponding domain names. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”).
Complainant further contends that Respondent’s registration and subsequent use of the disputed domain names serves as a disruption of Complainant’s legitimate business pursuant to Policy ¶ 4(b)(iii).The Panel agrees because, as Complainant correctly contends, a significant purpose of the websites was clearly to divert internet users to Respondent’s disparaging sites by the deceptive means of registering domain names that were confusingly similar to Complainant’s trademarks. Prior UDRP panels have found disruption of a Complainant’s legitimate business to show bad faith under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s marks, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
As Complainant has prevailed, it is not necessary to make a finding on the issue of reverse domain name hijacking
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jodykriss.com>, <jodykriss.net>, <jodykriss.org>, <jodykriss.info>, <jodylkriss.com>, <jodylkriss.net>, <jodylkriss.org>, <jodylkriss.info>, <eastriverpartnersllc.com>, <eastriverpartnersny.com>, <theeastriverpartners.com>, <eastriverpartnersgroup.com>, <eastriverpartners.net>, and <eastriverpartners.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 22, 2016
[1] In that case, the Complainant’s trademark was SUTHERLAND INSTITUTE and the disputed domain name was <sutherlandinstitute.com>.
[2] Also the Panel as presently constituted.
[3] See the extensive discussion on these issues at Geralde M. Levine, Domain Name Arbitration, Legal Corner Press, New York, 2015
[4]Being the present panelist
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