WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0052
The Petitioner is Klarna Bank ABofSweden, represented by SILKA Law AB, Sweden.
2. Domain Holder
The Domain Holder is P. I. of Bulgaria.
3. Domain Names and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain names <klarma.se> and <klarnagiftcard.se> (the “Domain Names”).
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The Petitioner elected to have the dispute decided by one arbitrator. The Petitioner elected to have the dispute decided as an Accelerated Proceeding if the Domain Holder does not respond to the Petition.
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on September 4, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on October 5, 2018.
Since the Domain Holder did not submit any response and the Petitioner had requested the dispute to be decided as an Accelerated Proceeding if the Domain Holder did not respond to the Petition, the dispute shall be decided as an Accelerated Proceeding.
The Center appointed Jon Dal as the sole Arbitrator in this matter on October 19, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
According to Section 7a. of the .se Rules, if a party is simultaneously petitioning for dispute resolution proceeding for several domain names against the same domain holder, the petitions shall be handled in a single proceeding if they are supported by the same rights which are legally recognized in Sweden. The petitioner must state whether there may be grounds for implementing a single proceeding. It is clear from the Petition that the claims are against the same domain holder and supported by the same rights which are legally recognized in Sweden. The two Domain Names therefore shall be handled in a single proceeding.
The Petitioner claims that the Domain Names shall be transferred to the Petitioner.
The Domain Holder did not submit any response.
5. Parties’ Contentions
The Petitioner was founded in 2005 in Stockholm, Sweden, with the aim of making it easier for people to shop online. The Petitioner is now one of Europe’s largest banks and is providing payment solutions for 60 million consumers across 70,000 merchants in 18 countries. The Petitioner has also a significant presence on various social media platforms.
Identical or similar
The Petitioner is the owner of several European Union (EU) trademarks for the string KLARNA, for example the trademark registration with registration number 009199803 registered on December 6, 2010. The Petitioner also holds several Swedish national trademark registrations corresponding to the term KLARNA, for instance trademark reg. No 012656658 registered on July 30, 2014. The Petitioner is also the owner of the company name Klarna Bank AB. The trademark registrations have legal force in Sweden.
The Domain Names which were registered on May 29, 2017 include the country-code Top-Level Domain (ccTLD) suffix “.se”. A ccTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. The suffix “.se” is to be disregarded as it is non-descriptive and merely instrumental for registration on the Internet. One of the Domain Names include the generic word “giftcard”. Incorporation of “giftcard” does not distinguish the Domain Name from the Petitioner’s trademark. The second Domain Name <klarma.se> is a typo-version of the Petitioner’s trademark where the letter “n” has been replaced with the letter “m”. A ccTLD suffix generally has no capacity to distinguish a domain name from a trademark. It is therefore safe to say that the Domain Names are identical to the Petitioner’s trademark.
Registered or Used in Bad Faith
The Petitioner tried to contact the Domain Holder on July 7, 2017 through a cease and desist letter. In the cease and desist letter the Petitioner advised the Domain Holder that the unauthorized use of its trademarks within the Domain Names violated their trademark rights and the Petitioner requested a voluntary transfer of the Domain Names. The Domain Holder replied and stated that the registrations weren’t intentional and were only obtained as part of the Domain Holder’s high volume of automated registrations. The Domain Holder wanted EUR 80 in return for transferring the Domain Names. The Petitioner explained that they would not submit payment for the Domain Names which were registered as part of the Domain Holder’s business model, which is capitalizing on domain names incorporating trademarked names. As an example, the Domain Holder has been involved in numerous of domain name disputes, to mention some recent cases, WIPO Case No. DSE2018-0028, WIPO Case No. DSE2018-0027, WIPO Case No. DSE2017-0042.
Since the efforts of trying to solve the matter amicably were unsuccessful, the Petitioner chose to file a Petition according to the .se domain name dispute process.
The Domain Holder has had ample time to create a website for genuine business but has failed to do so. The website remains a pay-per click website. Further, the Domain Holder is not known by the name “klarna”. The word “klarna” is unique and it does not seem to exist in any known language, it is an invented word by the Petitioner. The word does not exist as a trademark registration other than the Petitioner’s own registration. A quick search on the Internet (for the word “klarna”) would have alerted the Domain Holder of the rights related to the Petitioner. Such search is something an Internet skilled person does (which the Domain Holder appears to be) when he/she is about to register a domain name.
This is a strong indication of the Domain Holder being in bad faith when registering the Domain Names.
Rights or Justified Interests
The Domain Holder has no rights or legitimate interest in the Domain Names not having been in any manner authorized to make use of the KLARNA trade mark and not being commonly known by the term “klarna”, which has no meaning but in relation to the Petitioner. The fact that the registration date of the Domain Names predates the date of registration of the Petitioner’s trademark further supports that the Domain Holder has no right or legitimate interest in the Domain Names. On the contrary, it is unimaginable that the Domain Holder would have registered and used the Domain Names without intention to gain unfair advantages at the expense of the Petitioner. This is also evident as shown on the respective websites where the Domain Holder has listed the Domain Names for sale. In particular, the Petitioner has never granted a permission or license to the Domain Holder to use its KLARNA trademark. Moreover, the Domain Holder has never used and does not intend to use the Domain Names in connection with a bona fide offering of goods and services or any other legitimate interest. It is rather that the choice of the Domain Names (which fully incorporate the Petitioner’s trademark), that the Domain Holder deliberately opted for. Taken into account all factors, the Domain Holder should not be seen to have any rights or legitimate interest in the Domain Names. To host a page comprising pay-per-click links – does not support that the Domain Holder has a legitimate interest in the Domain Names.
B. Domain Holder
The Domain Holder did not submit any response.
6. Discussion and Findings
A domain name may be transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:
1. The domain name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The domain name has been registered or used in bad faith, and
3. The domain holder has no rights or justified interest in the domain name.
All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name.
A. The Domain Names are identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
The Petitioner is the owner of EU trademark registrations and a Swedish trademark registration for KLARNA (word).
The only difference between the Domain Name <klarma.se> and the trademark KLARNA is that the letter “n” has been replaced with the letter “m”, and the ccTLD “.se”.
The Domain Name <klarnagiftcard.se> includes the Petitioner’s trademark in its entirety together with the descriptive term “giftcard” and the ccTLD “.se”. “klarna” is the distinctive element of the Domain Name and clearly recognizable in it.
Based on the above, the Arbitrator finds the Domain Names to be similar to the Petitioner’s trademark KLARNA.
B. The Domain Names have been registered or used in bad faith
Based on the record, the Arbitrator finds the Domain Names to have been registered and used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Names
Based on the record, the Arbitrator finds the Domain Holder has no rights or justified interests in the Domain Names.
The Domain Names <klarma.se> and <klarnagiftcard.se> shall be transferred to the Petitioner.
Date: October 29, 2018