WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federal-Mogul Corporation v. noorinet
Case No. D2015-0828
1. The Parties
The Complainant is Federal-Mogul Corporation of Southfield, Michigan, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is noorinet of Daegu, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <jurid.com> is registered with Gabia, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2015. On May 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and confirming that the language of the Registration Agreement for the disputed domain name was Korean. On May 14, 2015, the Center sent a communication to the Parties in both English and Korean, inviting the Complainant to submit evidence of an agreement between the Parties that the language of proceeding should be English; or, to submit a Complaint translated into Korean; or, to request that English should be the language of the proceeding. The Complainant filed an amended Complaint in English on May 16, 2015, requesting that English be the language of proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Korean, and the proceeding commenced on May 20, 2015. In response to the Center’s notification of the Complaint, the Respondent belatedly requested for Korean to be the language of proceeding without providing any arguments or support.
In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2015. The Response was filed with the Center on June 9, 2015.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on July 3, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel by July 17, 2015. Due to unforeseen circumstances, the Panel found it necessary to extend the due date for the decision to July 31, 2015, and the Parties were so notified.
4. Factual Background
The Complainant is a manufacturer and global supplier of powertrain components and vehicle safety products with its headquarters in the United States and offices in more than 34 countries worldwide.
The Respondent appears to be a Korean entity or individual with an address in the Republic of Korea.
In July of 2014, the Complainant acquired the Jurid brand from Honeywell International Inc. Jurid has manufactured brake pads and brake pad linings since 1924, and is now considered a leading brand for friction materials. On July 11, 2014, the Complainant and Honeywell International Inc. signed an agreement for assignment of all rights and interests in the JURID trademarks and JURID and JURID-based domain names to the Complainant. Among the rights included in the agreement is the disputed domain name, which was first registered by Honeywell International Inc. on January 24, 2000 and used for the Jurid brand.
Some time later and before the transfer of the disputed domain name to the Complainant, the registration for the disputed domain name lapsed. On October 16, 2014, the Respondent obtained registration for the disputed domain name.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to JURID in which the Complainant has trademark registrations in a number of jurisdictions including in the Republic of Korea, Germany and Japan.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant notes that the Respondent has linked the disputed domain name to a parking service which shows bad faith intent to profit from the fame of the JURID mark. Further, the Complainant contends that the Respondent is a serial cybersquatter, who has been named as the respondent in a number of UDRP proceedings in the past.
With respect to the first element, the Respondent raises no assertions that dispute the Complainant’s trademark rights in JURID or that the disputed domain name is identical or confusingly similar to JURID.
With respect to the second element, the Respondent provides no explanation or evidence to show that it has rights in the disputed domain name. The Respondent claims that it did not have any knowledge of the Jurid brand at the time it registered the disputed domain name, but this would relate to the third element.
With respect to the final element, the Respondent denies that it was the respondent in the prior UDRP proceedings noted by the Complainant.
6. Discussion and Findings
A. Language of Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both Parties have had an opportunity to argue their position on this point. The Center issued a notice stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently filed its Response in Korean.
Since both Parties were permitted to and in fact did present their cases in the language of their preference, it appears that fairness has been maintained in view of the overall circumstances. Further, the content displayed at the website linked to the disputed domain name was in English. Accordingly, the Panel finds it proper and fair to render this decision in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds a number of trademark registrations for JURID in plain simple text which is identical to the disputed domain name. The JURID mark is registered in several countries including in the Republic of Korea, Germany, and Japan, and the trademark registrations all predate the registration of the disputed domain name by the Respondent.
For the reason mentioned above, the Panel finds that the first element has been established.
C. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name.
The Respondent has offered no arguments to establish that it has any rights or legitimate interests in the disputed domain name. Further, there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.
D. Registered and Used in Bad Faith
The Panel finds that there are sufficient reasons to find bad faith in this case.
First, “jurid” appears to be a coined term, and the Respondent’s registration for a domain name consisting of the exact same term should be viewed as more than mere coincidence.
Further, the Respondent has linked the disputed domain name with a parking service displaying sponsored links to brake pads and brake pad linings which are exactly the goods associated with the JURID mark. This does not constitute bona fide use, and there is no evidence of any history of bona fide use. On the contrary, the Respondent appears to be using the disputed domain name for its own commercial gain benefiting from goodwill associated with the JURID mark.
Whether or not the Respondent has a history of cybersquatting cannot be determined based on the present record, but the Panel finds it unnecessary for a finding of bad faith in this case.
For the reasons given above, the Panel finds that the third and final element has been sufficiently established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <jurid.com> be transferred to the Complainant.
Date: July 31, 2015