WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Klarna Bank AB v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo
Case No. D2021-1587
1. The Parties
The Complainant is Klarna Bank AB, Sweden, represented by SILKA AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil.
2. The Domain Names and Registrar
The disputed domain names <klarna.chat>, <klarna.finance>, <klarna.help>, <klarna.works> (“Disputed Domain Names”) are registered with NameCheap, Inc. (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 Names. On May 21, 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 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 Disputed Domain Name <klarna.finance> was registered on November 17, 2020 and the Disputed Domain Names <klarna.chat>, <klarna.help> and <klarna.works> were registered on December 7, 2020. Each resolves to an identical pay-per-click (“PPC”) parking webpage promoting links that include “bike insurances”.
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 Names <klarna.chat>, <klarna.finance>, <klarna.help>, <klarna.works>. It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names incorporate in their entirety the KLARNA trademark and that the similarity is not removed by the addition of the generic Top-Level Domains (“gTLD”) “.chat”, “.finance”, “.help”, or “.works”, respectively.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because each resolves to a PPC webpage promoting links to, amongst other things, bike insurances, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules and submits that “The Respondent knowingly chose to register and use the disputed domain names to divert customers from the Complainants’ official websites, deceive them into visiting the Disputed Domain Names 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 Names; and
(iii) that the Disputed Domain Names have been registered and are 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 of America 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 Names are identical or confusingly similar to the KLARNA trademark, the Panel observes that the Disputed Domain Names each comprises: (a) an exact reproduction of the Complainant’s trademark KLARNA (b) followed by the gTLDs “.chat”, “.finance”, “.help”, or “.works”, respectively.
It is well-established that the gTLD used as technical part of a domain name may be disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc, WIPO Case No. D2021-0859). The gTLDs chosen appear to have no special significance in this proceeding. The relevant comparison to be made is with the second-level portion of each Disputed Domain Name, specifically: “klarna”.
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: (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing).
This Panel finds that the Disputed Domain Names are identical to 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 Names. 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 Names. 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 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because (i) the Disputed Domain Names are 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 Names 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, Disputed Domain Names identical to a trademark carry “a high 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 Names in this proceeding resolve to PPC parking pages. 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 Names.
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 Names 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 Names 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 Names (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 evidence is that each of the Disputed Domain Names resolve to an identical PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s KLARNA branded services. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; WIPO Overview 3.0, section 3.5.
Complainant has also tabled evidence that, in the absence of a Reply, supports an inference that the Respondent allowed the Disputed Domain Names to be listed on a brokerage platform for USD 500, primarily for the purpose of selling each of them to the Complainant, which this Panel finds is valuable consideration in excess of the documented out of pocket costs of each, and the basis of a further finding of bad faith under the Policy.
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark KLARNA and incorporated it into the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to PPC parking web pages for commercial gain.
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 Names <klarna.chat>, <klarna.finance>, <klarna.help>, <klarna.works> be transferred to the Complainant.
Date: June 28, 2021