WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Klarna Bank AB v. Chen Yong Peng
Case No. D2019-1667
1. The Parties
The Complainant is Klarna Bank AB, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Chen Yong Peng, China.
2. The Domain Name and Registrar
The disputed domain name <klarna.tech> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2019. On July 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differs from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 22, 2019 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 amended Complaint in English on July 22, 2019.
On July 22, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2019. On August 18, 2019, the Respondent stated in an email to the Center that he is willing to give the disputed domain name to the Complainant. The Center then sent an email to the Parties regarding a possible settlement of the dispute on August 19, 2019. The Complainant sent the settlement forms signed by the Parties to the Center on August 28, 2019. Accordingly, the proceedings were suspended on the same day, and the Center sent the Notice of Settlement to the Registrar for its action. On September 2 and 13, 2019, the Complainant requested resumption of the proceedings as the Registrar refused to assist in the implementation of the settlement. The proceedings were then resumed on September 16, 2019, as requested by the Complainant.
The Center appointed Joseph Simone as the sole panelist in this matter on September 27, 2019. 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, Klarna Bank AB, is a Swedish e-commerce company that provides payment services for online storefronts. Klarna Group is active in 18 markets and has attracted major international clients such as Spotify, Disney, Samsung, Wish and ASOS.
The Complainant is the owner of several registered trademarks for KLARNA including:
- International trademark registration No. 1066079 in Classes 35 and 36, registered on December 21, 2010;
- Chinese trademark registration No. 14203831 in Class 36, registered on June 7, 2015; and
- Chinese trademark registration No. 14203834 in Class 45, registered on May 21, 2015.
The Complainant also owns several registered domain names containing the term “klarna” including <klarna.com>.
The Respondent registered the disputed domain name on November 20, 2018. It currently resolves to an error page. According to a screenshot the Complainant provided, the disputed domain name previously resolved to a page offering the disputed domain name for sale and providing the contact details of the Respondent.
On March 19, 2019, the Complainant sent an email regarding its trademark rights to the email addresses previously listed in the relevant WhoIs record, but which are different from the current contact details provided by the Center for the Respondent. The Complainant received no response.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant contends that the conditions for transfer of the disputed domain name have been satisfied in this case.
The Complainant contends that the disputed domain name <klarna.tech> is identical or confusingly similar to its trademark KLARNA, given that once the generic Top-Level Domain (“gTLD”) is disregarded, the disputed domain name is identical to the Complainant’s KLARNA trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name nor is there evidence that the Respondent has a history of using or preparing to use the disputed domain names in connection with a bona fide offering or goods and services or noncommercial fair use. The Complainant contends that while the business of buying and selling domain names can be a legitimate enterprise, this does not necessarily confer rights to use a domain name which is identical or confusingly similar to another party’s trademark, as is the case here.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith on the following grounds. It is highly unlikely that the Respondent was not aware of the KLARNA trademark rights which predate the registration of the disputed domain name. The Complainant tried to contact the owner of the disputed domain name by email using the address listed in the WhoIs record, but received no response. The Respondent was never granted permission to register the disputed domain name, and knowing of the Complainant’s rights, it proceeded to do so in bad faith.
The Respondent did not submit a formal response to the Complainant’s contentions, but sent an email to the Center offering to transfer the disputed domain name to the Complainant
6. Discussion and Findings
6.1 Language of Proceeding
In accordance with paragraph 11 of the Rules:
“[…] 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.”
Therefore, prima facie, the language of the proceeding shall be Chinese.
However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the following reasons. The disputed domain name contains its trademark KLARNA in its entirety and conducting the proceeding in Chinese would cause undue burden and delay to the Complainant. The Complainant is a Swedish company whose second language is English and the Respondent registered the disputed domain name using a gTLD “.tech” which is an English word, indicating it has at least some familiarity with the English language.
The Panel agrees it would cause undue burden on the Complainant. Furthermore, in this case, after being informed of the commencement of proceedings, the Respondent agreed to transfer the disputed domain name to the Complainant. It is therefore likely that the Respondent clearly understands the nature of the proceeding and chose not to submit a response. The Panel believes it would be an undue waste of resources to conduct the proceedings in Chinese, and shall therefore proceed in English.
6.2 Substantive Issues
There is a preliminary issue that must be addressed before deciding whether to proceed with a substantive decision on the merits. After the Center formally notified the Respondent that proceedings had commenced, the Respondent did not submit a formal response, but sent an email to the Center offering to transfer the disputed domain name to the Complainant. The Center then suspended proceedings in order to implement a settlement agreement between the parties. However, after the Registrar informed it would not agree to be involved in the transfer, the Complainant chose to reinstitute the proceeding.
Many UDRP panels have dealt with a Respondent’s unilateral consent to transfer and have been faced with a decision whether to proceed with a full decision on the merits or order the transfer without consideration of the elements under paragraph 4(a) of the Policy.
Factors warranting a full decision on the merits have included where the consent to transfer is accompanied by a request that the Panel will not make findings on the merits, and express denials of bad faith where the facts indicate the opposite (see Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921) as well as intentional delaying tactics, serial cybersquatting and previous UDRP cases decided against the Respondent (see President and Fellows of Harvard College v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0597).
In this case, the Panel is not aware that any of the above factors are present in this case. The Respondent did not expressly deny bad faith when it made the offer to transfer. The Complainant agreed to the Respondent’s offer to transfer and both parties signed the settlement forms. The Complainant’s request to resume proceedings was due to the fact that the Registrar would not assist in the actual transfer. Had the Registrar executed the transfer, the matter would have been resolved without formal proceedings.
Therefore, the most expeditious course is to order the transfer based on the parties’ intentions. The Panel will not conduct a substantive review of the merits but notes that the fact that the disputed domain name incorporates the Complainant’s unique trademark in its entirety, and without any contest from the Respondent who was apparently intending to sell the disputed domain name, is indicative that the elements under paragraph 4(a) of the Policy would be 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 <klarna.tech> be transferred to the Complainant.
Date: October 8, 2019