WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Klarna AB v. Willi Ehrlich, Insulaner e.K.
Case No. D2016-2182
1. The Parties
The Complainant is Klarna AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Willi Ehrlich, Insulaner e.K. of Wyk auf Föhr, Germany, self-represented.
2. The Domain Names and Registrars
The disputed domain names <klarna.name> and <klarna.tel> are registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 28, 2016, the Registrar 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 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 November 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2016. The Respondent sent different emails to the Center which are summarized in paragraph 5.B below, including an email of November 12, 2016 with a link to a letter in German which could be regarded as a response to the Complaint. On November 24, 2016, the Registrar informed the Center that the Respondent wanted to delete the disputed domain names. The Center replied that according to paragraph 4(b) of the Rules, the lock of the disputed domain names shall remain in place through the remaining pendency of these proceeding. As the Center had not received any formal response, the Center informed that it would proceed to appoint the Administrative Panel on November 30, 2016.
The Center appointed Alfred Meijboom as the sole panelist in this matter on December 2, 2016. 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 that provides payment services for online storefronts. The Complainant is owner of different KLARNA word marks (the “Trademarks”), including:
- European Union trademark nr. 9199803, registered on December 6, 2010 for services in classes 35 and 36, covering, inter alia, administrative processing of purchase orders, presentation of goods on communication media for retail purposes, automatic bookkeeping services, accident insurance underwriting, instalment loans, detection services in connection with credit cards, leasing of real estate, collection of money, brokerage of carbon credits, credit information services, fund management, financial administration of personal property (estate), insurance, financial affairs, monetary affairs, and
- German trademark nr. 9199803 for KLARNA, registered on August 1, 2011 for services in classes 35 and 36, covering, inter alia, insurance, financial affairs, monetary affairs, electronic payment services, bill payment services, credit information services
The disputed domain name <klarna.tel> was registered on December 31, 2012 and the disputed domain name <klarna.name> was registered on January 3, 2013.
5. Parties’ Contentions
According to the Complainant, the disputed domain names directly incorporate the Trademarks and the addition of the Top-Level Domains (the “TLDs”) “.tel” and “.name” does not add any distinctiveness to the respective disputed domain names so that the disputed domain names are confusingly similar to the Trademarks.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names as there is no bona fide offering of goods or services where the disputed domain names incorporate the Trademarks which is not owned by the Respondent, nor is the Respondent known by the name “KLARNA”. The disputed domain name <klarna.tel> resolves to a website operated in German which states that when the Respondent was looking for payment services in 2013 he found the Complainant. According to the Complainant it is very uncertain what the Respondent’s purpose of the website is. The Respondent is making use of the Complainant’s old “Klarna” logo on the top left of the website and uses the email address “firstname.lastname@example.org”. Further on the website, the Respondent has listed several domain names that include the Trademarks in their entirety that are for sale on an auction site. The Complainant notes that those domain names are not owned by the Respondent but by other third parties. According to the Complainant, merely encouraging the purchase of “klarna” related domain names should also be taken into account demonstrating non-legitimate interest in the disputed domain names. The disputed domain name <klarna.name> also resolves to a website in German, which according to the Complainant originally redirected to the Respondent’s website “www.ehrlich.tv” and displayed a video related to the Complainant. After the communication from the Complainant, the website has altered. The disputed domain name still redirects to the Respondent’s website but it has a letter posted which appears to be addressed to the Berlin public prosecutor. The letter also mentions the website “www.klarna.name” and the content does not make much sense according to the Complainant who also contends that it is difficult to get an understanding of the Respondent’s intention. However, the Complainant claims that it does not have ultimate control over the Respondent’s website and cannot guarantee the safety of its customers. The purpose of the Respondent’s website appears to create an association with the Complainant by attempting to take undue advantage from the registration of the disputed domain names which are confusingly similar in all aspects with the Complainant’s trademark.
The Complainant further alleges that the disputed domain names were registered and used in bad faith. The Complainant points out that the Trademarks predate the registration of the disputed domain names and that the Complainant had started to use the KLARNA brand in 2005, so that it seems to be unlikely that the Respondent was not aware of the Trademarks when he registered the disputed domain names, which constitutes registration in bad faith.
According to the Complainant the disputed domain names were also used in bad faith as the Complainant tried to contact the Respondent on July 1, 2016 through a cease-and-desist letter, which advised the Respondent that the unauthorized use of the Trademarks in the disputed domain names violated its trademark rights and the Complainant requested a voluntary transfer of the disputed domain names. On July 6, 2016, the Respondent sent an email to numerous of the Complainant’s employees and its representative claiming that the Respondent has a relationship with the Complainant and that he had not been presented with the Complainant’s request to purchase the disputed domain names. The Respondent advised the recipients that he would sell the disputed domain names for EUR 25,000 each, which he alleged to be a special price. The Complainant received an earlier email from the Respondent on June 25, 2016, stating that he is immigrating to Mallorca, Spain, where he would open two e-shops. The Complaint claims that the use of the disputed domain names for commercial websites without the Complainant’s consent cannot be considered as good faith use of the disputed domain names. The Respondent has neither acquired registered or unregistered rights in the name KLARNA.
Finally, the Complainant contends that the Respondent displays a pattern of registering well-known trademarks as domain names which can be taken into account as an indication of bad faith. In support of this contention, the Complainant refers to the fact that the Respondent also registered the domain name <airbus.tv> which incorporates the registered trademark AIRBUS.
The Respondent sent several emails to the Center in German in the period of November 2, 2016 until November 28, 2016. On November 2, 2016 the Center explained the UDRP procedure to the Respondent in German, expressly as a courtesy to the Respondent, and informed the Respondent that the proceedings are in the English language. After the Respondent’s repeated complaints that the Center should communicate in German, the Center explained that the language of the proceedings is English again on November 10, 2016 and November 14, 2016. The Respondent’s emails of November 3, 2016 and later to the Center were, however, all in German. Although the Respondent’s claims in his emails to the Center are rather unspecified, the Panel understands that the Respondent claimed, inter alia, that the Complainant is in some unexplained way involved in illegal food supplements and money laundering and that he could not express himself as the case was under criminal investigation. The Respondent’s email of November 12, 2016 contained a link to a document on his website under “www.ehrlich.tv”, which is a letter in German explaining that the Respondent does not speak English and he does not feel guilty about registering the disputed domain names as there are approximately 20 other domain names containing the Trademarks available for registration. The Respondent continued by stating that he has a web shop and used the services of the Complainant, but had never received a complaint from the Complaint’s German branch. The Complainant further alleged that he was slandered by a third party concerning, as the Panel understands, the Respondent’s payment systems, including the Complainant’s system.
6. Discussion and Findings
6.1. Language of the Proceeding
The first matter to be addressed is the language of the proceedings.
Article 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement is English.
In several emails the Respondent insisted that the Center corresponds in German, and the Respondent’s emails as well as his response on his website of November 12, 2016, were all in German. Furthermore, in his response of November 12, 2016, the Respondent alleged that he cannot speak English. Although the Panel appreciates that the Respondent does not understand English, this did not prevent him from entering into an English Registration Agreement when he registered the disputed domain names, and reacting to the Complainant’s cease-and-desist letter, which was in English. Further, the Center repeatedly advised the Respondent that the language of the proceedings is English and not German. Considering that it would be burdensome for the Complainant to translate the Complaint into German, while the Complainant correctly submitted the Complaint in English, and the Respondent was given the opportunity to have the Complaint translated or explained to him by someone who does understand English, the Panel determines that the language of the proceedings remains English.
However, in view of paragraph 10(b) of the Rules which requires the Panel to ensure that the Parties to this proceeding are treated with equality and that each Party is given a fair opportunity to present its case, the Panel accepts the Respondent’s emails and letter of November 12, 2016 in German.
6.2. Substantive Issues
Apart from the Respondent’s emails and the letter of November 12, 2012 on his website, the Respondent did not file a formal Response which addresses the Complaint’s allegations. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
a. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
b. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c. the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established that the TLD may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the generic TLDs “.tel” and “.name”.
While disregarding the TLDs, the Panel finds that the disputed domain names are identical to the Trademarks. Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (see e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant alleged that the Respondent is not commonly known by the disputed domain names, which the Respondent has not challenged. Further, the Respondent seems to operate or have operated one or more commercial web shops for which purpose he used the services of the Complainant. Both disputed domain names resolved to a website which refer to the Complainant and its services, which the Panel does not consider offerings of goods or services which are bona fide as the website under the disputed domain name <klarna.tel>, inter alia, refers to a list of domain names which include the Trademarks and which are being offered for sale to the public, thereby implicitly inducing Internet users to acquire such domain names which likely infringe the Complainant’s rights in the Trademarks and/or violate the UDRP, and the website under the disputed domain name <klarna.name> having displayed a video of the Complainant’s services which implies an economic link with the Complainant which does not exist. The Respondent’s change of the website under the disputed domain name <klarna.name> to redirect Internet users to a website with a somewhat confusing story about a criminal complaint does not constitute the Respondent’s right or legitimate interest in this disputed domain name either as the Complainant is not mentioned or involved, while Internet users may believe that the Complainant is in some way involved in criminal proceedings. The Respondent’s emails and November 12, 2016 letter to the Center do not clarify the Respondent’s intentions in this respect.
The Panel is therefore satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks the Complainant is relying on as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, at the time the disputed domain names were registered the Respondent was aware of the Trademarks as he acknowledged in the letter of November 12, 2012 on his website that he used the Complainant’s services prior to registration of the disputed domain names. The Panel is therefore satisfied that the disputed domain names were registered in bad faith. With respect to the Respondent’s alleged use of the disputed domain name in bad faith the Complainant has not submitted sufficient evidence showing that the Respondent has been involved in a pattern of conduct of preventing trademark holders from reflecting their respective trademarks in a corresponding domain name. The consensus view of UDRP panelists is that such pattern normally requires more than one relevant example, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 3.3, whereas the Complainant only referred to a single domain name which was not subject to a such case involving the Respondent. However, the Panel does find that the Respondent used the disputed domain name in bad faith because the Respondent required payment of EUR 25,000 for the transfer of each disputed domain names in reply to the Complainant’s cease-and-desist letter, thus indicating that the Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name (paragraph 4(b)(a) of the Policy).
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 names <klarna.name> and <klarna.tel> be transferred to the Complainant.
Date: December 15, 2016