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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klarna Bank AB (publ) v. Siobhan Pankhurst

Case No. DEU2018-0016

1. The Parties

The Complainant is Klarna Bank AB (publ) of Stockholm, Sweden, represented by SILKA Law AB, Sweden.

The Respondent is Siobhan Pankhurst of Cork, Ireland.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <klarnabank.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2018. On June 1, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On June 5, 2018, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was July 24, 2018. The Center received an email communication from the Respondent on July 23, 2018, consenting to the remedy in the Complaint. On the same day, the Complainant informed the Center and the Respondent that it will await the outcome of the decision. Upon receipt of the Respondent’s communication, the Center notified the Parties that the Response was formally deficient and requested the Respondent to cure the deficiencies until August 1, 2018. The Respondent did not submit a compliant Response. Accordingly, the Center notified the Respondent’s default on August 2, 2018.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 17, 2018. 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant is the registered owner of European Union Trademark registration no. 009199803 KLARNA registered on December 6, 2010 for services in classes 35 and 36.

The Complainant is also the owner of the company name Klarna Bank AB and of several domain names such as <klarna.com>, <klarnabank.com>, <klarna.se>, <klarnabank.se>, etc.

The Respondent registered the disputed domain name <klarnabank.eu> on June 20, 2017. The disputed domain name resolves to a registrar parking website.

It results from the Complainant’s documented allegations that on September 5, 2017, it sent a cease and desist letter to the Respondent requesting the transfer of the disputed domain name. The Respondent replied with email dated September 5, 2017, that he is willing to transfer the disputed domain name for
EUR 1,500, negotiable.

5. Parties’ Contentions

A. Complainant

According to the Complainant’s undisputed allegations, it was founded in 2005 in Stockholm, Sweden and is now one of Europe’s largest banks.

The Complainant contends that the disputed domain name is identical and/or confusingly similar to the Complainant’s trademark, since it incorporates the term “klarna” in full, combining it with the descriptive term “bank” and the suffix “.eu” that do not add any distinctiveness to the disputed domain name.

The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Complainant has not authorized the Respondent to make use of the KLARNA trademark. Furthermore, the Respondent is not commonly known by the term “klarna”, which has no meaning but in relation to the Complainant. It is unimaginable that the Respondent would have registered and used the disputed domain name without intention to gain unfair advantages at the expense of the Complainant. Moreover, the Respondent has never used and does not intend to use the disputed domain name in connection with a bona fide offering of goods and services or any other legitimate interest.

Finally, the Complainant contends that the disputed domain name was registered and/or is being used in bad faith. According to the Complainant, the Respondent, when registering the disputed domain name must have been alerted by the extensive media coverage on the Complainant. Furthermore, the Respondent only used the disputed domain name to resolve to a registrar parking website. Passive holding does not preclude a finding of abusive registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in its email dated July 23, 2018.

6. Discussion and Findings

According to Article 22 (11) of the Commission Regulation (EC) No 874/2004 (“the Regulation”) an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21. In the present case, the question is therefore, whether the registration is speculative or abusive within the meaning of Article 21 of the Regulation. According to this disposition and Paragraph B 11(d)(1) of the ADR Rules the Complainant bears the burden of proving the following:

(a) the disputed domain name is identical with or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law; and either

(b) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or

(c) the domain name has been registered or is being used in bad faith.

Furthermore, Article 22(10) of the Regulation provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.”

Given the similarities between the ADR Rules and the UDRP, the Panel will refer to UDRP jurisprudence where instructive.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law

Pursuant to Paragraph B(11)(d)(1) of the ADR Rules, the Complainant must, first of all, establish that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law.

It results from the evidence provided that the Complainant is the registered owner of the European Union trademark registration KLARNA no. 009199803 registered on December 6, 2010.

Many panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Elliot Elliot, WIPO Case No. D2018-0213). This Panel shares this view also for the present proceedings and notes that the Complainant’s registered trademark KLARNA is fully included in the disputed domain name.

In addition, the disputed domain name combines the Complainant’s registered trademark KLARNA as its distinctive element with the generic term “bank” which is directly applicable to the Complainant’s business and corresponds to the Complainant’s company name. The addition of this descriptive term to the distinctive trademark does not prevent a finding of confusing similarity (see Lidl Stiftung & Co. KG v. Name Redacted, Case No. DEU2018-0012).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a name in respect of which a right is established by Community law so that the Panel will proceed with the examination.

Pursuant to Paragraph B(11)(d)(1)(ii) of the ADR Rules, the Complainant must secondly establish either (1) that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name; or (ii) that the disputed domain name has been registered or is being used in bad faith

B. Rights or Legitimate Interests

The Panel finds that there is no information to suggest rights or legitimate interests of the Respondent to use the Complainant’s KLARNA trademark, pursuant to Paragraph B(11)(d)(1)(ii) of the ADR Rules.

Paragraph B(11)(e) of the ADR Rules contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complainant’s allegations, which have remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark KLARNA through the registration of the disputed domain name consisting of a reproduction of said trademark in its entirety.

Furthermore, it results from the undisputed documentation that the disputed domain name is not used and has never been used in the past either. In the absence of any substantial response by the Respondent, there is no evidence before the Panel showing that the Respondent, prior to any notice of the dispute, has used the disputed domain name or a name corresponding to the disputed domain name in connection with the offering of goods or services or has made demonstrable preparation to do so pursuant to Paragraph B(11)(e)(1) of the ADR Rules.

In addition, the Panel notes that there is no evidence either showing that the Respondent might be commonly known by the disputed domain name pursuant to Paragraph B(11)(e)(2) of the ADR Rules.

Finally, the Respondent is not making any use of the disputed domain name, and is therefore in particular not making any legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law, pursuant to Paragraph B(11)(e)(3) of the ADR Rules. In this context the Panel notes that it is indeed difficult to imagine a legitimate use of the disputed domain name which consists of the Complainant’s company name (except for the term “AB” referring to the Swedish form of a corporation). Finally, the fact that the Respondent in its email dated September 5, 2017 offered the Complainant the disputed domain name for sale at a price of EUR 1,500 rather underlines that the Respondent did not intend to proceed to any legitimate and noncommercial use thereof.

It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is therefore deemed to have satisfied Paragraph B(11)(e) of the ADR Rules.

C. Registered or Used in Bad Faith

Under Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint, as explained above. Since the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name there is no need for the Panel to discuss in depth the third element (bad faith).

It results from the undisputed evidence before the Panel that the Respondent registered or uses the disputed domain name in bad faith, pursuant to Paragraph B(11)(d)(1)(iii) of the ADR Rules. Paragraph B(11)(f) of the ADR Rules contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, may be evidence of the registration or use of a domain name in bad faith.

In the case at hand, the Panel has already found that the Respondent lacks rights or legitimate interests in the disputed domain name. In addition, it results from the undisputed documentation presented to the Panel that the disputed domain name is not used and has not been used in the past either. Finally, the Respondent in its email dated September 5, 2017 offered the Complainant the disputed domain name for sale at a price of EUR 1,500. This evidence is sufficient for the Panel to hold that there are circumstances indicating that the disputed domain name was registered primarily for the purpose of selling the disputed domain name to the holder of a name, in respect of which a right is recognized by Community law, i.e. the Complainant, pursuant to Paragraph B(11)(f)(1) of the ADR Rules.

In the light of the above, the Complainant is therefore deemed to also have satisfied Paragraph B(11)(e) of the ADR Rules.

D. Eligibility

The Complainant has requested the transfer of the disputed domain name to itself. The requested transfer of the disputed domain name to a Complainant can only be granted in case the Complainant is eligible to register .eu domain names according to Article 22(11) of the Regulation and Article 4(2)(b) of Regulation (EC) No. 733/2002, see also Paragraph B(11)(b) of the ADR Rules. If the general eligibility criteria are not met, the remedy that the Panel may otherwise grant will be restricted to revocation of the disputed domain name.

It is undisputed that the Complainant is a company registered and based in Sweden. In the light of the above, the Panel holds that the Complainant meets the general eligibility criteria within the meaning of Article 22(11) of the Regulation and Article 4(2)(b) of Regulation (EC) No 733/2002 and is therefore entitled to obtain transfer of the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <klarnabank.eu> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: September 16, 2018

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