WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klarna Bank AB v. Cui Long

Case No. DUA2021-0024

1. The Parties

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

The Respondent is Cui Long, China.

2. The Domain Name and Registrar

The disputed domain name <klarna.com.ua> is registered with Service Online LLC (DRS.UA) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 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 November 10, 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 November 11, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was January 9, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.

The Center appointed Ganna Prokhorova as the sole panelist in this matter on January 14, 2022. 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant, Klarna Bank AB, is a Swedish e-commerce company that provides payment services for online storefronts, that include direct payments, pay after delivery options and installment plans in a one-click purchase flow.

The Complainant is the owner of numerous trademark registrations for the KLARNA mark in various jurisdictions, including, inter alia, the KLARNA international trademark (International Trademark Registration No. 1066079) registered on December 21, 2010, covering classes 35 and 36 and designating Norway, Russian Federation, Switzerland, Turkey and China, where the Respondent is located.

The Complainant also owns and operates the domain name <klarna.com>.

The disputed domain name <klarna.com.ua> was registered on December 29, 2020. The disputed domain name was offered for sale for a minimum price of USD 1,000 using the SEDO service.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) the disputed domain name is identical or confusingly similar to the Complainant’s KLARNA trademark, which has been wholly incorporated into the disputed domain name;

(b) the Respondent has no rights or legitimate interests in the disputed domain name, which has never been used, and has not been put into use, by the Respondent for any bona fide offering of goods or services. The Respondent was not commonly known by the disputed domain name and the Complainant has never authorised or given permission to the Respondent, who is not connected with the Complainant in any way, to use its KLARNA trademark; and

(c) the Respondent both registered and is using the disputed domain name in bad faith. The Complainant’s KLARNA trademark is well-known in the financial industry and their registrations predate the creation of the disputed domain name. Therefore, it is highly unlikely that the Respondent was not aware of the Complainant’s registered rights in the KLARNA trademark when registering the disputed domain name. In addition, the fact that the Respondent failed to respond to the Complainant’s email supports a finding of bad faith. Further, the WhoIs page provided by the Registrar links to a pop-up page (powered by SEDO), offering the disputed domain name for sale for a minimum offer of USD 1,000, which proves the Respondent’s 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 .UA 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.

As noted by previous .UA panels, paragraph 11 of the .UA Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the .UA Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., Chewy Inc v. Rostislav Karyi / Ростислав Карый, WIPO Case No. DUA2020-0007).

In this case, the Registrar has confirmed to the Center that “The domain reseller’s website - NETIM.COM - uses English. Our Public Agreement is set out in Ukrainian”, which in the Panel’s view suggests that the language of the Registration Agreement as used by the registrant for the disputed domain name is Ukrainian. 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 is exclusively constituted of letters issued from the Latin alphabet, rather than Ukrainian or Russian script;

(b) the registrant of the disputed domain name is familiar with English language, since it contacted the Complainant and also replied to the Complainant’s representative cease-and desist letter in said language;

(c) the registrant of the disputed domain name seems to have registered other domain names such as <cashpoint.jp> or <steelseries.kr>;

(d) the Complainant and its representative are located in Sweden and have no knowledge of Ukrainian language;

(e) the use of Ukrainian language in this case would impose a burden on the Complainant which must be deemed significant in view of the low costs of these proceedings;

(f) the disputed domain name is exclusively constituted of the Complainant’s well-known KLARNA mark, and it resolves to a webpage offering the disputed domain name for sale;

(g) the registrant of the disputed domain name contacted the Complainant in order to offer it for sale with an English statement.

Therefore, the Complainant contends that filing the Complaint in Ukrainian language would be inequitable for both Parties, it would cause undue delay of these proceedings and it would increase the overall cost for the proceedings for necessary translation work, which is not justified under the circumstances to this case. Therefore, the Complainant respectfully requests the language of the proceeding to be English.

It is established practice to take paragraphs 10(b) and (c), and 11 of the .UA 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.

Having considered all arguments and evidence above, the Panel agrees with the Complainant and concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

6.2 Substantive Issues

Under paragraph 4(a) of the .UA Policy, the Complainant has the burden of proving the following:

(i) that 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 or is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the KLARNA trademark.

The disputed domain name exactly reproduces the Complainant’s KLARNA mark, with the addition of the country code Top-Level Domain (“ccTLD”) identifier “.com.ua”.

It is well established that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the ccTLD extension (“.com.ua” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)¹ .

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See WIPO Overview 3.0, section 1.7.

The disputed domain name incorporates the Complainant’s KLARNA mark in its entirety in addition to the ccTLD “.com.ua”. The use of the ccTLD “.com.ua” does not prevent a finding of the disputed domain name being identical to the Complainant’s trademark, as the ccTLD is viewed as a standard registration requirement.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s KLARNA trademark, and accordingly, paragraph 4(a)(i) of the .UA Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the .UA Policy, the Complainant has to establish that the Respondent has no rights or legitimate interests in the disputed domain name. In this regard, once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. However, the overall burden of proof remains with the Complainant to show that the activities of the Respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the .UA Policy), that the Respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the .UA Policy) and that the Respondent is not involved into a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the .UA Policy). See LEGO Juris A/S v. Anton Obrezkov, WIPO Case No. DUA2020-0001.

In the Panel’s view, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as none of the above circumstances applies:

(a) the Respondent is not a licensee of the Complainant, and it has not received any consent, permission or acquiescence from the Complainant to use its KLARNA mark in association with the registration of the disputed domain name;

(b) there are no evidence that the Respondent is commonly known by the disputed domain name or has ever operated under the name “Klarna”. In this regard, an Internet search of the disputed domain name shows how the results are mostly referred to the Complainant and its activities, even suggesting the Complainant’s domain name <klarna.com> as search criteria. In view of this, it is more than likely that Internet users will associate the disputed domain name with the Complainant, when they are not related;

(d) the disputed domain name resolves to a website in which it is offered for sale for USD 1,000. It clearly suggests that the disputed domain name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain;

(e) the evidence provided by the Complainant establishes that there is no bona fide use of the disputed domain name, as it was registered with the aim of selling it to the Complainant for an amount which exceeds the normal out-of-pocket costs for registering a domain name. To be specific, the Complainant received an unsolicited email from the Respondent that was offering for sale the disputed domain name for USD 2,000. The email also stated that “Protecting your brand is as important as growing it. Registering your brand domain name in Ukraine is one of the best preventative measures you can take to secure your trademark and combat copyright”. On August 23, 2021, a cease-and-desist letter was sent to the Respondent. The reply, received on the same date, declared that “Thanks for your email. But we will not transfer this domain to your client for free. However, if you would like to resolve this in a quick way, now we could sell it for 1000 USD. Thanks”. In this regards, the Panel considers that there is no bona fide use nor demonstrable preparations to use, rather it points to cybersquatting and a clear objective of commercial gain;

(f) since the disputed domain name is almost identical to the Complainant’s domain name <klarna.com>, the disputed domain name implies a high risk of implied false affiliation with the Complainant and its activities (see WIPO Overview 3.0, section 2.5.1).

Finally, the Panel may make negative inferences based on the Respondent’s failure to respond, and finds that the Complainant’s prima facie case is unrebutted.

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the .UA Policy.

C. Registered or Used in Bad Faith

Although according to paragraph 4(a)(ii) of the .UA Policy it is sufficient to prove registration of the disputed domain name or its use in bad faith, the Panel is convinced that the Respondent has both registered and is using the disputed domain name in bad faith.

UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Complainant’s KLARNA trademark appears to be well-known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “Klarna” are the Complainant’s official website and affiliated social media pages. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have been aware of the Complainant and its rights in the KLARNA mark. As such, the fact that the disputed domain name incorporates the Complainant’s KLARNA mark in its entirety creates a presumption of bad faith.

Furthermore, as already discussed in section 6.2.B. above, the Complainant received an unsolicited email from the Respondent in which it was informed that the disputed domain name was available for transfer for USD 2,000. According to paragraph 4(b)(i) of the .UA Policy, circumstances indicating that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs, is evidence of bad faith registration and use.

Considering this, the Panel concludes that the disputed domain name was registered with the Complainant’s KLARNA mark in mind and it is beyond doubt that the Respondent targeted the Complainant, which amounts to a registration of the disputed domain name in bad faith.

Considering this record as well as the Respondent’s failure to submit a response or provide any evidence of actual or contemplated good-faith use, the Panel finds that it is beyond doubt that the Respondent targeted the Complainant.

The Panel also takes into consideration that the Respondent “Cui Long” has been a respondent in previous UDRP decisions referring to well-known brands (like BARILLA, CLARINS or ASHLEY MADISON). See for instance Barilla G. e R. Fratelli S.p.A. v. Cui Long, WIPO Case No. DCO2021-0062; Clarins v. Cui Long, WIPO Case No. DRO2020-0005; Ruby Life Inc. v. Cui Long, WIPO Case No. D2019-0358 et al.

Therefore, the Panel believes that the Respondent may be engaged in a pattern of conduct by registering domain names infringing upon third parties’ trademark rights, which amounts to bad faith pursuant to paragraph 4(b)(ii) of the .UA Policy (“you have registered the 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 you have engaged in a pattern of such conduct”). This clearly shows that the Respondent registered and used the disputed domain name in bad faith.

In his turn, the Respondent has failed to file any response or provide any evidence of actual or contemplated good faith registration and use.

All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <klarna.com.ua> be transferred to the Complainant.

Ganna Prokhorova
Sole Panelist
Date: January 15, 2022

¹ Noting the similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel will refer to the WIPO Overview 3.0 and previous UDRP decisions when relevant