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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klarna Bank AB v. WhoisGuard Protected, WhoisGuard, Inc. / Tara Brown

Case No. D2021-0907

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Tara Brown, United States of America.

2. The Domain Name and Registrar

The disputed domain name <klarnaservice.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2021, 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.

The Center verified that 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 March 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2021.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 29, 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 is a Swedish fintech company that provides online financial services.

The trademark KLARNA was registered by the Complainant in several regions of the world, including in the European Union (such as registration numbers 009199803 and 010844462, respectively obtained on December 6, 2010 and September 24, 2012) and International Registrations under the Madrid System (such as registration number 1066079, designating China, Norway, Russia, and Turkey, obtained on December 21, 2010), among many others.

The Complainant is also the owner of several domain name registrations throughout the world containing the KLARNA mark distributed among generic Top-Level Domains (“gTLDs”) and country-code Top Level Domains (“ccTLDs”).

The disputed domain name <klarnaservice.com> was registered on November 11, 2020.

According to the Complainant, the disputed domain name has been used in connection to a parking page. However, the Panel accessed the disputed domain name on May 9, 2021, at which time the disputed domain name was not pointing to any active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant was founded in 2005 and is the only corporation in the world to be identified by the mark KLARNA. The Complainant has exclusive rights to the mark KLARNA. The said mark KLARNA has been openly, continuously and extensively used globally by the Complainant during the last decades and has thus acquired secondary meaning. The Complainant holds registration for the trademark KLARNA under different classes in multiple jurisdictions around the world, since 2010. The disputed domain name was registered in November 2020 and incorporates the Complainant’s registered mark KLARNA along with the generic word “service”. The Complainant’s registered trademark KLARNA is clearly recognizable within all the disputed domain name. The registration and the use of the disputed domain is a direct infringement of the legitimate rights held by the Complainant in the mark KLARNA. The addition of the gTLD “.com” does not differentiate the disputed domain name from the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent either as a licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services. Any person or entity using the mark KLARNA in any manner is bound to lead customers and users to infer that its product or service has an association or nexus with the Complainant and lead to confusion and deception. It is indeed extremely difficult to foresee any justifiable use that the Respondent may have with the disputed domain name. The Respondent has published a parking page linked to the disputed domain name, attempting for commercial gain by misleadingly diverting consumers / Internet users to the Complainant’s competitors. The use of parking pages reinforces the (false) association between the strong and exclusive trademark KLARNA and the disputed domain name. Furthermore, the MX-record for the disputed domain name is active and implies that email IDs have been or planned to use for phishing, spamming or other illegal activities. The disputed domain name has a recent registration date (November 2020), while the Complainant is using the brand KLARNA since the last fifteen years. The disputed domain name is clearly intended to “pass off” as the Complainant and have a free ride on its reputation and goodwill.

- The disputed domain name was registered and is being used in bad faith. The Complainant is one of Europe’s largest banks and is providing payment solutions to approximately 90 million customers in 17 countries. Undoubtedly, the disputed domain name was registered and is being used by the Respondent in bad faith, aiming to cause confusion and mislead the Complainant's customers as well as the general public. It is inconceivable that the registration of the disputed domain name was made without full knowledge of the existence of the Complainant and its well-known trademark. The Respondent also aims to generate income through a “click through” parking scheme. Panels have consistently found that the use of “click through” advertising links on a disputed domain name constitutes evidence of registration and use of a domain name in bad faith. Moreover, the Respondent’s use of the disputed domain name diverts potential consumers away from the Complainant’s website to the Complainant’s competitor, as a result, disrupting the Complainant’s business. Finally, the given facts also satisfy the doctrine of passive holding.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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 Complaint shows trademark registrations for KLARNA obtained by the Complainant as early as in 2010.

The disputed domain name differs from the Complainant’s trademark KLARNA by the addition of the suffix “service”, as well as the gTLD “.com”.

Previous UDRP decisions have found that the mere addition of descriptive terms (such as “service”) to a trademark in a domain name does not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is also already well established that the addition of a gTLD such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

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

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, “klarna” is a coined term, with no dictionary meaning, not being possible for this Panel to interpret from the Respondent's silence any legitimate reason for registering the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

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

(i) circumstances indicating that the respondent has registered or acquired the 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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

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

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent in November 2020, the trademark KLARNA was already directly connected to the Complainant’s activities in the online financial sector.

Besides the gTLD “.com”, the disputed domain name is comprised of the Complainant’s peculiar trademark KLARNA and of the descriptive term (“service”), suggesting an obvious reference (and likelihood of confusion, as well) to services supposedly related to the Complainant.

Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “klarnaservice” could be a mere coincidence.

Indeed, the Complainant indicated – and the Respondent didn’t contest – that the disputed domain name has been used in connection with pay-per-click links (including links to the Complainant’s competitors), in a clear attempt 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 disputed domain name.

Currently, there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances that the Respondent is: (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing a third-party’s trademark (a coined term with no dictionary meaning), certainly cannot be used in benefit of the Respondent in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.

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 <klarnaservice.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: May 13, 2021

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