The Complainant is Klarna AB, of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Guo Jie Zhang, Zhang Guo Jie, of Putian, Fujian, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2017. On April 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2017, 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.
On April 24, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Center received email communications from the Respondent on May 2 and 3, 2017. The Response was filed with the Center on May 9, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 7, 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 is a Swedish e-commerce company founded in 2005 that provides payment services for online storefronts. The Complainant’s corporate group has more than 1,400 employees, is active on 18 markets, serves 45 million consumers and works with 65,000 merchants. The Complainant has also a significant presence on various social media platforms, such as Facebook, YouTube, Instagram, Google+ and Twitter. The Complainant has registered trademarks in multiple jurisdictions, including international registration number 1066079 for KLARNA, registered from December 21, 2010, and designating multiple jurisdictions, including China; international registration numbers 1182130 and 1217315, both for KLARNA, registered from August 1, 2013 and March 4, 2014, respectively; and Chinese trademark registration numbers 14203831 and 14203834, both for KLARNA, registered from June 7, 2015 and May 21, 2015, respectively. These registrations specify services in multiple classes, including electronic payment services. The Complainant has also registered domain names including that it uses in connection with its official websites to inform customers about itself and its services.
The Respondent is an individual located in China. His name is associated with over 5,000 domain names. The disputed domain name was registered on February 7, 2017. It does not resolve to any active website, that is, it is passively held. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s KLARNA trademark. The disputed domain name incorporates the KLARNA trademark in its entirety. The addition of a generic Top-Level Domain (“gTLD”) suffix does not add any distinctiveness to the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent is commonly known by the disputed domain name and there is no evidence that the Respondent has any history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services or noncommercial fair use. There is no active website on the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent has been subject to a large number of disputes that led to the suspension of the domain names concerned, a pattern of conduct that strongly indicates that the Respondent chose the disputed domain name becauseofthe Complainant’s well-known mark and the intention to financially benefit from it. In doing so, the Respondent is also preventing the Complainant from reflecting its trademark in a corresponding domain name. The Respondent has never been granted permission to register the disputed domain name. The Respondent clearly knew about the Complainant’s trademark at the time of the registration of the disputed domain name and has proceeded to use it in bad faith, which is apparent given the Respondent’s pattern of abusive registrations. The disputed domain name was deleted after the Complainant sent a cease-and-desist letter to the contact email address listed in the WhoIs database, but it was later re-registered by the Respondent. B. Respondent
According to an Internet search, the Complainant is a European company that supports start-up companies and has no activities at all in China, let alone an international reputation. The Complainant’s presence on social media platforms is irrelevant because these platforms are prohibited in China. Any similarity between the disputed domain name and the Complainant is pure coincidence. For example, ABC is a well-known service mark in the United States but in China “ABC” can refer to the Agricultural Bank of China. The same trademark can be used by completely different companies in domain names with different gTLD suffixes, otherwise, what is the point of developing new gTLD suffixes? Moreover, every trademark has limitations and does not apply to unlimited industries and fields. The Complainant’s trademark does not incorporate any element “online” so where is the confusion?
Klarna (柯拉娜) may be the Respondent’s pet name, Internet name, pen name or stage name. The Respondent is not obliged to go around the world to see whether a company has a similar name. The Respondent has no responsibility to provide evidence regarding this as it would disclose private information. The Respondent has registered the disputed domain name solely for personal interest, without any commercial purpose, with no intention or opportunity to provide goods or services associated with the Complainant. The Respondent’s personal website or plan is in preparation and there is no rule that a website must be open for business within a few months of registration of a domain name. Given that the Respondent’s website has not yet been officially launched, it cannot be misleading.
There is no evidence of bad faith registration. According to what rule of national or international law does the registration of more than one domain name constitute bad faith? Domain name registration is open and fair on a first-come, first-served basis, therefore the Respondent needed to register some domain names in advance which is normal and does not constitute any basis for infringement of the interests of third parties. The Respondent registered the disputed domain name purely for use with his personal website development and has never considered selling, renting or transferring it to the Complainant or its competitor. The Respondent knows nothing about online payment technology. The Chinese government does not allow anyone to engage in financial business without approval. Therefore, the Respondent has no way to prevent the Complainant from providing its services. The Respondent is not qualified to compete with the Complainant and has never considered disrupting anyone’s business. The Respondent registered the disputed domain name for purely personal reasons and has no commercial interest in it. The Respondent cannot divert Internet users from the Complainant’s website to his personal website because the Complainant has virtually zero reputation in China.
The Respondent requests the Panel to make a finding of reverse domain name hijacking. The Complainant failed to persuade the previous registrant of the disputed domain name to transfer it and now uses this proceeding to achieve the same purpose. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that if the proceeding was to be conducted in Chinese it would risk delaying the procedure and unduly burden the Complainant, which is a Swedish company; that the disputed domain name is registered under an international gTLD suffix (“.online”) that is an English word and that the Respondent has registered a multitude of domain names consisting of English words which indicates that the Respondent must be familiar with the English language.
The Respondent stated that the Rules required the Complainant to file the Complaint in Chinese.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English and that the Response was filed in Chinese. Both Parties have addressed all three elements of the Policy. The Response itself demonstrates that the Respondent has understood the Complaint. The fact that the Respondent has registered many other domain names incorporating many English words further indicates that he is able to understand English. The Center has appointed a Panel familiar with both Chinese and English. Therefore, the Panel considers that requiring either Party to translate its submissions would create an undue burden and unnecessary delay, while accepting all documents as filed in their original language causes no unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents filed in Chinese without translation. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following 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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the KLARNA trademark.
The disputed domain name wholly incorporates the Complainant’s KLARNA trademark as its dominant element.
The only additional element in the disputed domain name is the gTLD suffix “.online”. A gTLD suffix generally has no capacity to dispel confusing similarity between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. If anything, the addition of the gTLD suffix “.online” in this case may increase the association with the Complainant’s trademark because the Complainant uses its KLARNA trademark to provide payment services for online storefronts.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [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 Panel has already found that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant informs the Panel that the Respondent has never been granted permission to register the disputed domain name. The disputed domain name does not resolve to any active website. There is no evidence of any preparations to use it in connection with a bona fide offering of goods or services. The Respondent’s name is “Guo Jie Zhang, Zhang Guo Jie” and there is no evidence that he has been commonly known as “Klarna”. Nothing else on the record indicates that the Respondent has any rights or legitimate interests in respect of the disputed domain name.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is now for the Respondent to rebut that case by presenting facts and arguments that show that he does have such rights or legitimate interests.
The Respondent argues that the same trademark can be used by completely different companies in domain names with different gTLD suffixes. The Panel considers this argument irrelevant because there is no evidence that the Respondent uses, or even proposes to use, KLARNA as a trademark in connection with the provision of any goods or services.
The Respondent argues that “Klarna” (柯拉娜) may be the Respondent’s pet name, Internet name, pen name or stage name. The Panel observes that the Respondent makes this argument on a hypothetical basis and provides no evidence in support of an assertion that “Klarna” is a name associated with him in some way. The Respondent raises privacy concerns regarding the production of such evidence but, if the name were private, it is difficult to understand why the Respondent would then register it as a domain name, which is publicly available worldwide.
The Respondent submits that he has registered the disputed domain name solely for personal interest, without any commercial purpose, with no intention or opportunity to provide goods or services associated with the Complainant. He also submits that his personal website or plan is in preparation. The Panel observes that the Respondent provides no evidence in support and, in any case, vague ideas regarding a potential use of a domain name do not create rights or legitimate interests for the purposes of the Policy.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration in bad faith, the Panel observes that the disputed domain name is identical to the Complainant’s KLARNA trademark, but for the gTLD suffix. The disputed domain name registration postdates the Complainant’s trademark registrations – including in China, where the Respondent is located. The Complainant has made extensive use of its trademark in different countries around the world, and not simply on social media platforms inaccessible in China. The Respondent’s choice of the gTLD suffix “.online” indicates an awareness of the nature of the services that the Complainant provides in connection with its KLARNA mark. The Respondent has registered many other domain names that wholly incorporate third-party trademarks, like the disputed domain name, so that it is implausible that the similarity between the disputed domain name and the Complainant’s trademark is coincidental. Although the Respondent argues that the registration of more than one domain name does not constitute bad faith, this misses the point, which is that the registration of multiple domain names incorporating third-party trademarks is indeed evidence of bad faith. The Respondent provides no substantiated explanation for his choice of the disputed domain name. In view of these circumstances, the Panel is persuaded that the choice to register a domain name identical to the Complainant’s trademark but for the gTLD suffix was made in bad faith.
With respect to use in bad faith, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant has a reputation in its trademark which is known in relevant sectors through its use in connection with payment services for online storefronts, including through the Complainant’s official website. The disputed domain name consists of the exact trademark KLARNA in combination with the gTLD suffix “.online” that relates to the nature of the services that the Complainant provides in connection with that trademark. The Respondent has registered many other domain names that wholly incorporate third-party trademarks, like the disputed domain name. These are all indicia of use in bad faith.
The Respondent submits that he will not use the disputed domain name to compete with the Complainant. While this may be true, it does not exclude other potential bad faith uses of the disputed domain name, such as those listed in paragraph 4(b) of the Policy, among others. The Respondent argues that he cannot divert Internet users from the Complainant’s website due to an alleged lack of reputation in China. However, irrespective of the Complainant’s reputation in China, the Panel notes that the disputed domain name, if it resolved to an active website, would be accessible throughout the world and not only in China. Accordingly, the Panel finds that the disputed domain name is being passively held in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking
For the reasons set out above, the Panel finds that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative proceeding. 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 be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: June 12, 2017
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