WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klarna AB v. Pan Shuai Lou

Case No. D2016-2369

1. The Parties

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

The Respondent is Pan Shuai Lou of Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <klarnarechnung.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 30, 2016.

On November 28, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 30, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 December 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 13, 2017. 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, founded in 2005, is a Swedish e-commerce company that provides payment services for online storefronts. The Klarna Group has more than 1,400 employees and is active on 18 markets. The Complainant serves 45 million consumers and works with 65,000 merchants. The Complainant is the leading e-commerce payment company in Europe.

The Complainant advertises its services on its website “www.klarna.com” and also boasts a significant social media presence, with nearly 30,000 followers on Facebook, 630 subscribers and more than 1.1 million views on YouTube, more than 1,300 followers on Instagram, and 5,500 followers on Twitter.

The Complainant owns registrations for the mark KLARNA in a number of countries around the world, including European Union Trademark No. 009199803 (registered on December 6, 2010), International Registration No. 1217315 (registered on March 4, 2014), which is designated for protection in Australia, Switzerland, Norway, the Russian Federation, Singapore and Turkey, and International Registration No. 1066079 (registered on December 21, 2010), which is designated for protection in China, among other countries.

The Respondent registered the disputed domain name on September 9, 2016. The disputed domain name resolved to a parking website including links that direct the Internet user to ads for third-party goods and/or services, which the website refers to as “Related Links.” The link text is in German, but the remainder of the website text is in English as are the ads to which the links direct. Some of the links include “Klarna” in the text.

The Complainant sent the Respondent a cease-and-desist letter requesting that the Respondent transfer the disputed domain name to the Complainant. The Respondent initially responded by email in English and offered to transfer the disputed domain name for the price of USD 2,000.

The Respondent is also identified as the registrant of other domain names that contain third-party trademarks, including <longtalsally.com>, <androdpay.com>, and <helixbed.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s KLARNA mark and the German word “rechnung,” which means “bill” or “invoice” in English. The addition of the generic Top-Level-Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the name KLARNA. The Respondent is not making a bona fide offering of goods or services in connection with the disputed domain name. Instead, the disputed domain name points to a parking page that includes links, some of which directly reference the Complainant and the Complainant’s line of business. Presumably, the Respondent receives pay-par-click revenue for these links. The use of this parking page that includes links related to the KLARNA brand causes public confusion. Though there is nothing illegitimate per se in using a domain name parking services, using such a service with a trademark owner’s name in mind in the hope and expectation that Internet users searching for information about the trademark owner will be directed to that parking service page does not provide a legitimate interest in the disputed domain name. In this case, it can be concluded that the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain, and therefore to mislead consumers and tarnish the Complainant’s trademark.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark rights predate the registration of the disputed domain name by more than ten years. It is not likely that the Respondent was unaware that registration of the disputed domain name would be unlawful. Therefore, the disputed domain name was registered in bad faith. The Complainant contacted the Respondent through a cease-and-desist letter, advising the Respondent that the Respondent’s unauthorized use of the Complainant’s trademark in the disputed domain name violated the Complainant’s trademark rights and requesting voluntary transfer of the disputed domain name. The Respondent replied by offering to transfer the disputed domain name for USD 2,000. This amount exceeds the cost to register the disputed domain name. This supports the conclusion that the disputed domain name was registered only to try to sell it. The use of the disputed domain name for a commercial website without the Complainant’s consent cannot be considered good faith use because the Respondent has no rights in the name KLARNA. Finally, the Respondent has shown a pattern of abusive registrations. The Respondent is also the owner of several other domain names containing third-party marks, including <longtalsally.com> (LONG TALL SALLY), <androdpay.com> (ANDROID PAY), <helixbed.com> (HELIX SLEEP), among others. This pattern of abuse is further indication of the Respondent’s bad faith. Therefore, the Respondent’s use of the disputed domain name is in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. In this case the language of the Registration Agreement is Chinese. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint, in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. The disputed domain name resolves to a website that contains English words. Most tellingly, the Respondent responded to a cease and desist letter from the Complainant, written in English, by an email message also written in English. Finally, substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. The Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English, in light of these circumstances.

6.2 Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

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

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

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of the KLARNA trademark and owns several trademark registrations for the mark. The Panel accepts that the Complainant’s mark is well-known in its industry.

The disputed domain name is composed of the term “klarna,” which is identical to the Complainant’s trademark, the term “rechnung,” and the gTLD “.com.” The German word “rechnung” means “bill” or “invoice” in English, and is related to the Complainant’s payment services. The addition of this descriptive word does not impact the overall commercial impression of the disputed domain name and is insufficient to prevent Internet user confusion. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414. Additionally, the “.com” gTLD extension, being a technical part of the domain name, does not affect the assessment of whether the disputed domain name is confusingly similar to the Complainant’s KLARNA mark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Therefore the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

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

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

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

The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is not used in connection with a website that makes any active offer of goods or services. Instead the disputed domain name resolves to a parking website. Additionally, the Respondent has not demonstrated preparation to use the disputed domain name in connection with a bona fide offering of goods or services.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name.

The Respondent is not making any noncommercial or fair use of the disputed domain name. Instead, the Respondent is using the disputed domain name commercially in connection with a domain name parking service. The disputed domain name resolves to a website that includes links to ads for third-party goods and/or services, presumably to generate pay-per-click revenue.

Finally, the Respondent did not respond to the Complainant’s letter requesting that the Respondent transfer the disputed domain name with any information that may show that the Respondent has legitimate interests in the disputed domain name. The Panel may conclude that the Respondent has provided no evidence to rebut the Complainant’s assertions. See, e.g., Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the 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 the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The 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 the Respondent has engaged in a pattern of such conduct; or

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

The Respondent was undoubtedly aware of the Complainant and its KLARNA trademark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its KLARNA trademark are well-known particularly in the Complainant’s industry. Additionally, the Complainant owns trademark registrations for its KLARNA trademark in multiple jurisdictions, including in China where the Respondent is located. Although the Respondent is not obligated to conduct an exhaustive trademark search before registering a domain name, a simple Internet search for “klarna” would have yielded many obvious references to the Complainant and its KLARNA trademark. Moreover, the inclusion of a payment services-related word in the disputed domain name itself and the resolving website indicate that the Respondent was aware of the Complainant and its payment services. The website includes the KLARNA mark and references to financial and payment processing activities. The Respondent’s intentional registration of a domain name incorporating the Complainant’s well-known mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent has also demonstrated bad faith use of the disputed domain name. The Respondent is parking the disputed domain name and the resolving website includes links to ads for third-party goods and/or services, presumably for the purpose of generating pay-per-click commissions. The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Initially, Internet users would be likely to be drawn to the Respondent’s website because of the confusing similarity between the disputed domain name and the Complainant’s KLARNA mark. See Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. By prominently featuring the Complainant’s KLARNA mark and various terms related to the Complainant’s business activities on the resolving website the Respondent affirmatively created an impression that the Respondent’s website and the disputed domain name were associated with the Complainant. Therefore, once they arrived at the Respondent’s website, Internet users would be led to believe mistakenly that the website is controlled by or affiliated with the Complainant. By creating this false impression, the Respondent could commercially benefit by pay-per-click commissions earned from consumers clicking the links on the website. These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. Additionally, even if prompted by the Complainant’s demand letter, the Respondent’s offer to sell the disputed domain name for USD 2,000 (which, the Panel infers, is far greater than the Respondent’s out-of-pocket costs to acquire the disputed domain name) is evidence of the Respondent’s bad faith. See Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166. Finally, by holding the disputed domain name, the Respondent is preventing the Complainant from reflecting its mark in the same domain name. The Respondent holds other domain names comprised of other well-known third-party marks, indicating a pattern of abusive registrations. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, WIPO Case No. DAU2013-0012. This further supports the finding that the Respondent registered and is using the disputed domain name in bad faith.

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, <klarnarechnung.com>, be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: January 25, 2017