WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Klarna Bank AB v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-1586
1. The Parties
The Complainant is Klarna Bank AB, Sweden, represented by SILKA AB, Sweden.
The Respondent is Registration Private, Domains by Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <klarnatest.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 21, 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 May 25, 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 on May 26, 2021.
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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 18, 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
The Complainant operates a banking and payments business in 17 countries with more than 3,500 employees, serving in excess of 200,000 merchants, 90 million consumers and with e-commerce transactions in 2019 exceeding USD 35 billion. The Complainant holds a portfolio of registrations for the trademark KLARNA, and variations of it, in numerous geographies including the United States where the Respondent is located. International Trademark Registration No. 1066079, for example, was registered on December 12, 2010.
The Complainant owns a number of domain names that incorporate its trademark including <klarna.com>.
The Respondent registered the Disputed Domain Name <klarnatest.com> on December 1, 2020. The Disputed Domain Name resolves to a webpage promoting links to gambling websites and get-rich-quick share trading schemes.
5. Parties’ Contentions
The Complainant cites its International trademark registrations including No. 1066079 registered on December 12, 2010 and numerous other registrations around the world, for the mark KLARNA as prima facie evidence of ownership.
The Complainant submits that the mark KLARNA is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <klarnatest.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the KLARNA trademark and that the similarity is not removed by the hyphenated addition of the word “test’, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a webpage promoting links to gambling websites and
get-rich-quick share trading schemes, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that “the Respondent knowingly chose to register and use the Disputed Domain Name <klarnatest.com> to divert customers from the Complainant’s official websites, deceive them into visiting the Disputed Domain Name and drawing damaging conclusions as to the Complainant’s global presence, thus adversely affecting the Complainant’s goodwill and reputation!”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that each Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark KLARNA in numerous geographies including the United States and in many other jurisdictions. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the KLARNA trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark KLARNA (b) followed by the word “test”; (d) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “klarnatest”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the descriptive word “test”: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Construction Skills Certification Scheme Limited v. Ben Swarovski, WIPO Case No. D2012-1628 (“This generic addition [of the word “test”] does not avoid confusion with the mark”)).
This Panel finds that the addition of the word “test” does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is parked and; (ii) Respondent has not acquired or owned any trademark or service mark rights in the name KLARNA, and has not been commonly known by the name KLARNA; and (iii) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s Marks.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra.
Further, where the composition of the Disputed Domain Name consists of a trademark and a word like “test” the potential for phishing or fraud attendant on a payments service, in this Panel’s view carries “a risk of affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”); and Veuve Clicquot Ponsardin Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (“so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”) and WIPO Overview 3.0, section 2.5.1).
The Panel notes the evidence that the Disputed Domain Name in this proceeding resolves to a parking page promoting links to gambling websites and get-rich-quick share trading schemes. The Panel is satisfied that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a response, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy requires that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found. The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230; WIPO Overview 3.0, section 3.1).
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark KLARNA is so widely known that this Panel infers that the Respondent knew, or should have known, that its registration of the Disputed Domain Name would be identical or confusingly similar to the Complainant’s trademark (see Klarna Bank AB v. Song Guang Yu, WIPO Case No. D2018-2160 (“the Complainant’s trade mark enjoys a significant Internet presence: a cursory Internet search would have disclosed the KLARNA trade mark and its use by the Complainant”); Klarna Bank AB v. 杨智超 (Yang Zhi Chao), WIPO Case No. D2021-0595 (“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”); Klarna Bank AB v. Contact Privacy Inc. Customer 0156474513 / a MCCOY, Reelarc X Klarna, WIPO Case No. D2020-1215 (“Complainant’s KLARNA trade mark appears to be well known”).
In addition, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007‑1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by at least 10 years.
On the issue of use, the Complainant’s uncontested evidence is that a DNS ‘mail exchange’ (MX) record has been activated, allowing email to be routed to a mail server, in further evidence of bad faith under the policy in view of the increased risk of fraud or phishing (see: Drägerwerk AG & Co. KGaA v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / BLACK ROSES, WIPO Case No. D2020-3167 (“Furthermore, the certificate and the MX record relating to the disputed domain name suggest that it is or was possibly used for email communication. Under these circumstances, the Panel considers it likely that the Respondent intended to use the disputed domain name as a support for a potential fraudulent email scheme, namely to impersonate the Complainant and extract personal or financial data from persons believing that the communication comes from the Complainant”).
This Panel finds that use of the Disputed Domain Name to resolve to a website that promotes links to gambling websites and get-rich-quick share trading schemes is also evidence of bad faith. In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark KLARNA and incorporated it in the Disputed Domain Name along with the word “test”, without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <klarnatest.com> be transferred to the Complainant.
Date: June 25, 2021