WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Klarna AB v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang
Case No. D2017-0220
1. The Parties
The Complainant is Klarna AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America ("United States") / Zhichao Yang of, Hefei, China.
2. The Domain Name and Registrar
The disputed domain name <payklarna.com> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 4, 2017. On February 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 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 February 8, 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 February 12, 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 February 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2017.
The Center appointed Gregory N. Albright as the sole panelist in this matter on March 16, 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 the owner of the following service mark registrations:
- Reg. No. 4582346 issued by the United States Patent and Trademark Office on August 12, 2014 for the mark KLARNA, in International Classes 035, 036, 042 and 045; and
- China Trademark No. 1066079 for the mark KLARNA, registered December 21, 2010.
The disputed domain name was registered on November 1, 2016.
5. Parties' Contentions
Klarna, the Complainant, is a Swedish e-commerce company that provides payment services for online storefronts. The company, founded in Stockholm in 2005, is one of Europe's fastest growing companies, and offers safe and easy-to-use payment solutions to e-stores. At the core of Klarna's services is the concept of after-delivery payment, which lets buyers receive ordered goods before any payment is due. Klarna Group has more than 1,400 employees and is active in 18 markets. Klarna serves 45 million consumers and works with 65,000 merchants, attracting major international clients such as Spotify, Disney, Samsung, Wish and ASOS. In 2010 Klarna opened in other countries like Germany and Netherlands. In 2015 Klarna launched in the United States. In 2010 Klarna also launched its third smart payment option — Klarna mobile. To further accelerate growth Klarna acquired the German online payment company SOFORT in 2013.
The Complainant has also a significant presence on various social media platforms, such as Facebook, YouTube, Instagram, Google+ and Twitter.
The Complainant is the owner of registrations for the KLARNA mark in numerous countries all over the world, including China where the Respondent Zhichao Yang is located.
The Complainant has also registered several domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term "KLARNA," including, for example, <klarna.com> and <klarna.us>. The Complainant is using these domain names to connect to websites through which it informs potential customers about its services.
1. Identical or Confusingly Similar
The disputed domain name was registered on November 1, 2016, and incorporates the Complainant's registered trademark KLARNA and the English word "pay". The addition of the gTLD ".com" does not add any distinctiveness to the respective Domain Name. The disputed domain name is confusingly similar to the registered mark KLARNA.
2. Rights or Legitimate Interests
The website to which the disputed domain name resolves.
The disputed domain name resolves to a website that provides links, some of which refer to the Complainant and its lines of business. The Respondent presumably receives pay-per-click ("PPC") revenue for these links. The Respondent has offered no evidence that it owns relevant prior rights of its own, or is commonly known by the disputed domain name. Nor does the Respondent make legitimate, noncommercial use of the disputed domain name. Hence, the Respondent's use of a parked webpage with related links to the KLARNA mark causes confusion in the marketplace.
The PPC landing page contains links to ads that relate at least in part to the KLARNA mark. Those who register domain names in large numbers for targeted advertising through automated programs and processes must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others. The Respondent's use of PPC leads to the conclusion that the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain, to mislead consumers, and to tarnish the Complainant's KLARNA mark. See Owens Corning v. NA, WIPO Case No. D2007-1143 ("It is common knowledge that the way in which many of these services operate is that the domain parking service operators obtain 'click through revenue' when Internet users click on the 'sponsored links' on the displayed page. Many of these services will then provide the domain name registrant with part of that 'click through' revenue.").
Finally, the Respondent has been granted an opportunity to explain why it has rights in the disputed domain name but has failed to do so. The Respondent also has had ample time to activate the website to which the disputed domain name resolves since its November 1, 2016 registration but the disputed domain name is still parked, which demonstrates further non-legitimate use.
3. Registered and Used in Bad Faith
The disputed domain name was registered in bad faith. The Complainant's service mark rights and registrations predate the registration of the disputed domain name.
Further, the Respondent uses a privacy shield. Although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. Use of a privacy service also suggests a motive to make it harder for the Complainant to identify the Respondent, which does not reflect good faith. The Complainant has conducted trademark database searches, searches on Google, and business registers, etc. The Complainant cannot find that the Respondent has any registered rights in KLARNA or has become known by "Klarna."
The disputed domain name is also being used in bad faith. The Complainant tried to contact the Respondent on December 21, 2016 through a cease-and-desist letter, which advised the Respondent that unauthorized use of the Complainant's mark within the disputed domain name violated the Complainant's rights, and requested a voluntary transfer of the disputed domain name. No response was received, and a reminder was sent on January 4, 2017. No response was received to the reminder.
The use of the disputed domain name for a commercial website without the Complainant's consent cannot be considered as good faith use of the disputed domain name. The Respondent has neither acquired registered or unregistered rights in "Klarna." Searches conducted in trademark databases do not disclose that the Respondent has applied for or is the owner of a corresponding mark. A Google search for "Klarna" yields results solely related to the Complainant.
To summarize, KLARNA is a well-known mark in the financial industry. It is highly unlikely that the Respondent was unaware of the rights the Complainant has in the KLARNA mark and its value when the Respondent registered the disputed domain name. The Respondent bears no relationship to the trademark and the disputed domain name has no other meaning except for referring to the Complainant's name and mark. There is no way in which the disputed domain name could be used by the Respondent legitimately. Consequently, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove as to the disputed domain name that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Complainant has shown that it owns rights in the KLARNA service mark (and that it acquired those rights prior to the Respondent's registration of the disputed domain name).
The Panel agrees with the Complainant that the addition of "pay" to "KLARNA" in the disputed domain name does not mitigate confusing similarity. See Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093 (Additions of "pay" and ".com" to the Complainant's KINDLE trademark were "insufficient to distinguish the [domain name] from the Complainant's KINDLE trademark.").
The Panel finds that the disputed domain name, <payklarna.com>, is confusingly similar to the Complainant's KLARNA mark for purposes of the Policy.
The first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent selected the disputed domain name to capitalize on the value of the Complainant's mark, without justification. The Complainant has confirmed that the Respondent is not connected to the Complainant and does not have the Complainant's permission to use the disputed domain name.
Further, the disputed domain name is connected to a PPC parking page with links to services like the Complainant's, and it may be presumed that the Respondent is deriving pay-per-click ("PPC") revenue therefrom. See Opportunity Financial, LLC v. Zhichao Yang, WIPO Case No. D2016-1524.
The Respondent also did not come forward with any evidence to rebut the Complainant's prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Considering all the circumstances, the Panel finds that when the Respondent registered the disputed domain name the Respondent had the Complainant and its mark in mind, and registered the disputed domain name for the reason of deriving PPC revenue from visitors to the Respondent's website who were confused about the Respondent's association with the Complainant.
The Respondent's failure to respond to the Complainant's initial cease-and-desist letter, and reminder, is also relevant to the question of bad faith, see, 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.
In addition, the Respondent has been involved in several previous UDRP cases, including Opportunity Financial, LLC v. Zhichao Yang, WIPO Case No. D2016-1524; and The Chancellor, Masters and Scholars of the University of Oxford, trading as Oxford University Press v. Zhichao Yang, WIPO Case No. D2015-1884. The Respondent's serial cybersquatting weighs heavily in favor of a finding of bad faith in this case, as well.
The third element of paragraph 4(a) of the Policy is satisfied.
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 <payklarna.com> be transferred to the Complainant.
Gregory N. Albright
Date: March 30, 2017