WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klarna Bank AB v. WhoisGuard Protected, WhoisGuard, Inc. / Melanie Forster

Case No. D2021-0756

1. The Parties

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

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Melanie Forster, Germany.

2. The Domain Name and Registrar

The disputed domain name <klarna-gateway.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2021. On March 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with three disputed domain names. On March 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 15, 2021, removing two of the three disputed domain names.

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 Respondent of the Complaint, and the proceedings commenced on March 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on April 6, 2021.

The Center appointed Ingrīda Kariņa-Bērziņa, as the sole panelist in this matter on April 13, 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

Complainant is a Swedish company, founded in 2005, that provides payment services for online retailers internationally. It is the proprietor of several registrations for the KLARNA mark, including the following:

- European Union Trademark No. 009199803 for KLARNA (word mark), registered on December 6, 2010, for services in classes 35 and 36;
- European Union Trademark No. 010844462 for KLARNA (word mark), registered on September 24, 2012, for services in classes 35, 36, 42 and 45;
- International Trademark No. 1066079 for KLARNA (word mark), registered on December 21, 2010, for services in classes 35 and 36;
- International Trademark No. 1182130 for KLARNA (word mark), registered on August 1, 2013, for services in classes 35, 36 ,42 and 45.

The disputed domain name was registered on November 29, 2020. It does not resolve to an active website. The disputed domain name has active email exchange (MX) records, indicating actual or intended use of the disputed domain name for email purposes. The record does not contain copies of any such emails. Voice dialing software appears to have been set up on the disputed domain name.

The record contains a copy of Complainant’s cease-and-desist letter to Respondent dated January 22, 2021. The record does not contain a reply to this letter.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it is currently one of Europe’s largest banks and is providing payment services for over 90 million customers using 190,000 merchants in over 15 European countries. Complainant has more than 3,000 employees, most of them based in Sweden. Complainant is highly visible on online platforms such as Facebook and Twitter, and Instagram. Complainant is the exclusive owner of the KLARNA mark, which has been in continuous use since 2005 and is registered in jurisdictions across Europe and in Asia and North America. Complainant’s KLARNA mark is clearly recognizable within the disputed domain name.

Under the second element, Complainant states that Respondent is not affiliated with Complainant, which has built up a good reputation in Europe and beyond through a substantial investment in promoting its product under the KLARNA mark. Complainant has not authorized Respondent to use its registered and distinctive KLARNA mark. The activated MX records indicate it is highly improbably that Respondent has any rights or legitimate interests in the disputed domain name. The parking page to which the disputed domain name resolves contains a disclaimer referring to sponsored links which were previously visible as pay-per-click advertisements. Such advertisements were removed after Complainant sent a cease-and-desist letter to Respondent. Further, open source software for online telephony has recently been installed on the website to which the disputed domain name resolves. Respondent appears to have, for financial gain, attempted to mislead Internet users into believing that Respondent is affiliated with Complainant.

Under the third element, Complainant states that it is one of Europe’s largest banks with a substantial international customer base. The KLARNA mark transcends regional boundaries and has acquired a trans-border reputation, as is evidenced by Google search results for the term “Klarna” and Complainant’s visibility in online platforms. Complainant states that its KLARNA mark is distinctive and unique, which immense popularity. Respondent registered the disputed domain name in full knowledge of Complainant’s mark, which is well known. The activation of MX records and the installation of Internet telephony software implies bad faith on the part of Respondent.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain nams; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the KLARNA mark through registrations in the European Union and internationally. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

In comparing Complainant’s KLARNA mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s KLARNA mark in its entirety. Complainant’s trademark is recognizable within the disputed domain name, and the addition of the descriptive term “gateway” does not prevent the confusing similarity.

It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

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

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s KLARNA mark together with the descriptive term “gateway”, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Such use does not establish rights or legitimate interests in the domain name. See, for example, Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 (<adobeacrobat.com> and <acrobatreader.com>).

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. The circumstances of the case, in particular, the visibility of Complainant’s mark is a prominent element of the disputed domain name, the configuration of the disputed domain name for e-mail purposes, and the use of pay-per-click advertisements prevent the inference of any rights nor legitimate interests on the part of Respondent.

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

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s trademark rights predate the registration of the disputed domain name by at least a decade, and the descriptive term “gateway” indicates a link with Complainant’s business. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, Respondent has concealed its true identity by using a privacy service. There is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. The configuration of MX records for email is indicative of probable use of the disputed domain name for the purpose of impersonating Complainant and misleading Internet users. Such a finding is consistent with previous UDRP decisions, such as Drägerwerk AG & KGaA v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / BLACK ROSES, WIPO Case No. D2020-3167 and Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.

The Panel therefore finds that Complainant has established 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 <klarna-gateway.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: April 27, 2021