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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klarna AB v. Domain Admin, Information Privacy Protection Services Limited / zhangdongxiang

Case No. D2017-1448

1. The Parties

The Complainant is Klarna AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.

The Respondent is Domain Admin, Information Privacy Protection Services Limited of Hong Kong, China / zhangdongxiang of Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <wwwklarna.com> is registered with Ourdomains Limited (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2017. On July 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 28, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 1, 2017.

The Center verified that the Complaint together with the amendment to the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 4, 2017.

The Center appointed James Bridgeman as the sole panelist in this matter on September 11, 2017. 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.

4. Factual Background

The Complainant is an e-commerce company, established in Sweden in 2005 and provides payment services for online storefronts.

The Complainant is the registered owner of international trademark registration KLARNA, number 1066079, registered on December 21, 2010 for goods and services in international classes 35, 36, designating China among other jurisdictions under the Madrid Protocol.

Since its establishment the Complainant has grown and is now carrying on business using the KLARNA mark in 18 markets, including Sweden, Germany, the Netherlands and the United States of America with more than 1,400 employees working with 65,000 merchants serving 45 million consumers.

The Complainant has established an Internet presence on social media sites and maintains its company website to which its portfolio of Internet domain names which contain the word "klarna" resolve including <klarna.se> and <klarna.com> both of which were registered on December 12, 2008.

The disputed domain name was registered on September 20, 2014 and the registrant availed of a privacy service.

The first named Respondent is the provider of a privacy domain name registration service to the second named Respondent. In the absence of any Response or other communication from the Respondents there is no information available about the second named Respondent except that which has been submitted in the Complaint and is available from the Registrar's WhoIs. References to "Respondent" in the following sections of this decision refer to the second named Respondent except where the context otherwise indicates.

The disputed domain name resolves to a pay-per-click website.

5. Parties' Contentions

A. Complainant

The Complainant claims rights in the KLARNA trademark and service mark relying on its rights in the abovementioned international trademark registration and additionally rights which it claims to have established at common law by its reputation in the use of the trademark in connection with its payment services business in 18 markets in Europe and North America and on its websites as described above.

The Complainant alleges that the disputed domain name <wwwklarna.com> is confusingly similar to the Complainant's KLARNA mark because it consists of the Complainant's registered trademark KLARNA in combination with two generic elements viz. the letters "www" which it submits refer to the "world wide web" and the generic Top-Level Domains (gTLD) extension ".com". The Complainant argues that the two generic elements do not add any distinctiveness to the disputed domain name <wwwklarna.com>. In this regard the Complainant cites A Place for Mom, Inc. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2016-2265 concerning the domain name <wwwaplaceformon.com> where the panel found that the domain name was confusingly similar to the trademark A PLACE FOR MOM, disregarding the "www" for the purpose of the comparison.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name arguing firstly that the disputed domain name is not being used to provide a bona fide offering of goods or services in circumstances where the disputed domain name incorporates the trademark KLARNA which is not owned by the Respondent.

Furthermore the Complainant submits that the Respondent is not known by the name "Klarna". The Complainant states that it has conducted trademark database searches, searches on Google and business registers to try to establish whether the Respondent might have any rights in the name Klarna in conjunction with clothing or similar goods and services. The results of these searches have failed to disclose any such rights on the part of the Respondent or that the Respondent has become known by the name Klarna. Moreover, when performing a search on Google.com for "Klarna" all the results retrieved are related to the Complainant.

The Complainant submits, and has provided evidence in the form of a screenshot, that the disputed domain name is pointing to a parking page provided by the registrar with links, some of which are directly referencing the Complainant and the Complainant's line of business. The Complainant submits that the presumption must be that the Respondent receives pay-per-click revenue for these links and such activity cannot constitute a legitimate interest in the disputed domain name.

The Complainant further submits that the disputed domain name was registered and is being used in bad faith because the Complainant's trademark registration and use predates the registration of the disputed domain name.

The Complainant alleges that the pay-per-click links on the Respondent's parking page relate to the trademark KLARNA in the hope and expectation that Internet users searching for information about the business activities of the Complainant will be directed to the Respondent's parking service page which amounts to bad faith use. In support of this assertion the Complainant cites the decisions in Express Scripts, Inc. v. Windgather Investments Limited / Mr Cartwright, WIPO Case No. D2007-0267 and Owens Corning v. NA, WIPO Case No. D2007-1143.

The Complainant argues that it is within the direct control of the Respondent to disable the pay-per-click service and its failure so to do leads to the conclusion that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, so as to mislead consumers and tarnish the trademark of the Complainant.

Additionally, because the Respondent has had ample time to establish an active website since the date of registration of the disputed domain name but has failed so to do, the Complainant alleges that it can be inferred that the Respondent has no such rights or legitimate interest in the disputed domain name.

The Complainant argues that the Respondent's motive for using a domain privacy service in this instance has been to increase the difficulty for the Complainant of identifying the Respondent. The Complainant accepts that the use of a privacy or proxy registration service is not in itself an indication of bad faith but argues that the manner in which such service is used by the Respondent in the present case is indicative of bad faith.

The Complainant has submitted evidence that it sent a cease-and-desist letter to the Respondent on May 2, 2017 which asserted that the Respondent's unauthorized use of the Complainant's trademark within the disputed domain name violated the Complainant's trademark rights and demanded a voluntary transfer of the disputed domain name. No response was received and a reminder was sent on May 8, 2017. No response was received to the reminder. As there was no response to these attempts to resolve the matter amicably, the Complainant chose to file this Complaint according to the UDRP process. The decisions in a number of cases under the Policy have held that the failure of a respondent to respond to a cease-and-desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

iii. the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided convincing evidence that it has rights in the KLARNA trademark through its abovementioned International trademark registration and its extensive use of the KLARNA mark in commerce since 2005.

The disputed domain name consists of three elements viz. the letters "www", the word "klarna" and the gTLD extension ".com". This Panel accepts the Complainant's submission that the letters "www" are an acronym for the "world wide web" and in the circumstances of this proceeding may be ignored when comparing the Complainant's mark and the disputed domain name. For the same reason, in the circumstances of the present case the gTLD extension ".com" may be ignored for the purposes of comparison.

This Panel finds that the word "klarna" is the dominant and the only distinctive element in the disputed domain name and is identical to the Complainant's trademark.

This Panel finds therefore that the disputed domain name is confusingly similar to the Complainant's trademark.

The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has submitted that the disputed domain name is confusingly similar to the Complainants mark; that the Complainant has not given any right or license to the Respondent to use the KLARNA mark or any similar mark; that the disputed domain name resolves to a parking page with what appear to be pay-per-click links which are using the Complainant's mark and reputation to divert Internet traffic; and that the disputed domain name is not used for any other business or noncommercial purpose. Furthermore the Complainant has provided prima facie evidence that the Respondent is not known by the disputed domain name and browser searches have failed to disclose any connection between the Respondent and the KLARNA mark. In the circumstances of such a strong prima facie case the burden of production shifts to the Respondent to establish such rights or legitimate interests.

The Respondent has failed to file any Response or provide any other submissions or explanations and therefore has failed to discharge the burden of production.

In the circumstances, this Panel finds that on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore succeeded in the second element of the test in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name consists of two generic elements in combination with the Complainant's KLARNA trademark. The Complainant had an established Internet presence prior to the registration of the disputed domain name. In the circumstances, especially given the distinctive character of the Complainant's mark, this Panel finds that on the balance of probabilities the disputed domain name was selected and registered because of its similarity to the Complainant's mark and in order to take predatory advantage of the Complainant's reputation by diverting Internet traffic.

The Respondent has caused, permitted or allowed the disputed domain name to resolve to a parking page from which, on the balance of probabilities, the Respondent is receiving pay-per-click revenue from the diverted Internet traffic. This Panel accepts the Complainant's submission that it is within the direct control of the Respondent to disable the pay-per-click service and its failure so to do leads to the conclusion that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the website or location.

In reaching this conclusion, this Panel finds that, in the circumstances of the present case, the Respondent's use of an identity-concealing proxy service and the Respondent's failure to respond to the Complainant's cease-and-desist letter, or to the Complaint is indicative of bad faith registration and use.

In the circumstances this Panel finds that the disputed domain name was registered and is being used in bad faith.

As the Complainant has succeeded in each of the three elements in the test in paragraph 4(a) of the Policy the Complainant is entitled to the relief sought.

7. Decision

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, <wwwklarna.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: September 15, 2017

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