WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klarna Bank AB v. 杨智超 (Yang Zhi Chao)

Case No. D2021-0595

1. The Parties

The Complainant is Klarna Bank AB, Sweden, represented by SILKA AB, Sweden.

The Respondent is 杨智超 (Yang Zhi Chao), China.

2. The Domain Name and Registrar

The disputed domain name <paywithklarna.com> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2021. On February 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2021, 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 March 9, 2021 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 in English on March 10, 2021.

On March 9, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on March 10, 2021. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on March 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2021.

The Center appointed Rachel Tan as the sole panelist in this matter on April 29, 2021. 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

Founded in 2005, the Complainant is an e-commerce company based in Sweden. It provides payment services for online storefronts, including direct payments, pay after delivery options and installment plans in a one-click purchase flow. It provides payment solutions for over 90 million consumers across 190,000 merchants in over 15 countries. As of 2011, about 40% of all e-commerce sales in Sweden went through Klarna.

The Complainant is the owner of trade marks incorporating the KLARNA mark in multiple jurisdictions, including International Registration No. 1066079 KLARNA, registered on December 21, 2010, designating, inter alia, China, in classes 35 and 36. The Complainant is also the owner of a list of domain names which incorporate the KLARNA mark, such as <klarna.com>.

The Respondent is 杨智超 (Yang Zhi Chao), China.

The disputed domain name was registered on October 22, 2020 and resolves to a parked page comprising pay-per-click advertising links that divert Internet users to various websites relating to different content such as virtual live receptionist services, business messaging services and payment services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has exclusive rights to the KLARNA mark. The disputed domain name incorporates the Complainant’s KLARNA mark and the generic words “pay with”. The words “pay with” have been used together with the KLARNA mark on the Internet and the Complainant has used a similar tagline - “Buy Now, Pay Later with Klarna” in promotions. The Complainant asserts that the registered KLARNA mark is clearly recognizable within the disputed domain name and the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The addition of the generic Top Level Domain (“gTLD”) “.com” does not differentiate the disputed domain name from the KLARNA mark.

The Complainant further alleges that the Respondent lacks rights and legitimate interests in the disputed domain name as the Respondent is not affiliated with the Complainant in any way to make use of the KLARNA mark. The Complainant has not authorized the Respondent either as a licensee, vendor, supplier, distributor, or customer relations agent for the Complainant’s services. The Respondent is not commonly known by the disputed domain name. The Respondent attempts to induce customers of the Complainant to believe that the Respondent is associated with the Complainant and misleadingly divert Internet users to the Complainant’s competitors through the parked page of the disputed domain name for commercial gain.

The Complainant finally asserts that the disputed domain name has been contrived for the express purpose of exploiting the goodwill of the Complainant and to mislead the general public. The registration of a domain name that is confusingly similar to another’s mark, despite actual or constructive knowledge of the mark holder’s rights, constitutes bad faith registration and use. Further, the Complainant contends that the Respondent has registered the disputed domain name with complete knowledge of the Complainant’s mark. By including hyperlinks featuring related keywords that link to advertisements for the Complainant’s competitors in the parked page, the Respondent generates income through “click through” revenue and this constitutes evidence of registration and use of a domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:

(a) the disputed domain name incorporates a Swedish trade mark and the Respondent has chosen “.com” as the gTLD which stands for “commercial”. The Respondent could have chosen the local country code TLD .”cn” instead if it wanted to market themselves towards the local audience;

(b) the disputed domain name includes English words such as “pay” and “with” and the website has pay-per-click links operated in English language. This is evident that the Respondent is familiar with the English language; and

(c) the proceeding will likely be put through unnecessary trouble and delay if Chinese were made the language of the proceeding and there would be no discernible benefit to the parties or the proceeding in the circumstances may be gained by maintaining the default language of the proceeding.

It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below.

(a) The Complainant is a company based in Sweden. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;

(b) The Respondent’s choice of English words combined with Roman letters for the disputed domain name, as well as the English content of the webpage under the disputed domain name, indicates some familiarity with the English language;

(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and

(d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default.

The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the KLARNA mark.

The Panel notes that the KLARNA mark in wholly encompassed within the disputed domain name. The positioning of the KLARNA mark after a common verb “pay” and preposition “with” makes it instantly recognizable as the most distinctive element of the disputed domain name. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Moreover, the additional words “pay with” do not preclude a finding of confusing similarity between the KLARNA mark and the disputed domain name. It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms that describe or refer to part of the complainant’s business in the disputed domain name does not affect the finding of confusing similarity of the disputed domain name from the registered trade mark under the first element of the Policy. As the words “pay with” is related to the Complainant’s payment services, their addition does not affect the confusing similarity between the disputed domain name and the Complainant’s KLARNA mark. See section 1.8 of the WIPO Overview 3.0.

Lastly, it is permissible for the Panel to ignore the gTLD, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0.

Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In circumstances where the Complainant possesses exclusive rights to the KLARNA mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.

The disputed domain name resolves to parked pages comprising pay-per-click advertising links that divert consumers. The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain name or reasons to justify the choice of the term “KLARNA”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s KLARNA mark or register the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy are present in this case.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s KLARNA mark had been registered well before the registration of the disputed domain name. Through use and advertising, the Complainant’s KLARNA mark is known throughout the world. Moreover, “klarna” is not merely a word. Search results using the key word “klarna” on the Baidu and Google search engines direct Internet users to the Complainant and its services, which indicates that an exclusive connection between the KLARNA mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s KLARNA mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.

Section 3.1.4 of the WIPO Overview 3.0 states that the “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s widely-known KLARNA mark plus the descriptive words “pay with” that is related to the Complainant’s payment services, thus, creating a presumption of bad faith.

Section 3.5 of the WIPO Overview 3.0 states that “[p]articularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests)”. The Panel notes that the disputed domain name resolves to parked pages comprising pay-per-click advertising links that divert Internet users to various virtual live receptionist services, business messaging services and payment services sites. The Panel finds the use of the confusingly similar disputed domain name to lure Internet users to websites hosting links to providers of competing services is evidence of bad faith. See Sodexo v. 杨智超 (Zhi Chao Yang), WIPO Case No. D2020-1171.

The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.

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 <paywithklarna.com> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: May 13, 2021