The Complainant is Klarna Bank AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Song Guang Yu of Beijing, 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 was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2018. On September 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2018, 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 September 26, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On September 28, 2018 and September 30, 2018, the Respondent requested that Chinese be the language of the proceeding. On October 2, 2018, the Complainant confirmed its request that English be the language of the proceeding.
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, in English and Chinese, of the Complaint, and the proceedings commenced on October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. The Respondent did not file any substantive Response with the Center. On November 1, 2018, the Center notified the Parties that it will proceed to appoint the Panel.
The Center appointed Sok Ling MOI as the sole panelist in this matter on November 7, 2018. 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 Stockholm in 2005, is a Swedish e-commerce company that provides payment services for online retail stores. The Complainant has more than 1,400 employees, is present in 18 markets, works with 65,000 merchants (including five based in China) and serves 45 million consumers. The Complainant has a significant presence online and on various social media platforms, such as Facebook, YouTube, Instagram, Google+ and Twitter.
The Complainant is the owner of the following trade mark registrations for KLARNA:
Jurisdiction
Mark
Registration Number
Registration Date
International
KLARNA
1217315
March 4, 2014
International
KLARNA
1182130
August 1, 2013
International
KLARNA
1066079
December 21, 2010
China
KLARNA
14203837
August 7, 2015
The Complainant has also registered the following domain names and is using the same to connect to websites through which it informs potential customers about its services:
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The disputed domain name was registered on July 23, 2018. According to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain name does not resolve to any active website and appears never to have done so in the past. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trade mark.
The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent was previously involved in a domain name dispute over registering a domain name that incorporated a well-known third party trade mark, which suggests the Respondent is targeting well-known brands. The Complainant contends that given the fame of the Complainant’s trade mark, the Respondent must have been aware that Internet users may reasonably be misled into believing that any website connected to the disputed domain name is controlled by or associated with the Complainant. The Complainant contends that the disputed domain name has been registered to prevent the Complainant from reflecting its trade mark in a corresponding domain name. Therefore, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. In his email communication of November 20, 2018, the Respondent simply indicated that he was a “domain name enthusiast” and that the disputed domain name was a “normal registration”. 6. Discussion and Findings 6.1. Procedural Issue: Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent has requested that Chinese be the language of the proceeding.
Although the Respondent appears to be a Chinese native individual and claims not to understand English, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and
(b) the Respondent corresponded with the Center in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present his case in this proceeding; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties’ ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2. Substantive Issues
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
On the basis of the available record, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in KLARNA by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant’s trade mark KLARNA in its entirety. The addition of the generic Top-Level-Domain (gTLD) “.kim” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the second level domain of the disputed domain name is identical to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the KLARNA trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “klarna”.
As the disputed domain name does not resolve to any active website, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to offer any explanation for his registration of the disputed domain name, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the
registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or 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 trade mark 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 trade mark 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel notes that, according to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.3.
The KLARNA trade mark has been used by the Complainant since 2005 and registered as a trade mark in China since 2015. The Panel accepts that the Complainant’s trade mark enjoys a significant Internet presence: a cursory Internet search would have disclosed the KLARNA trade mark and its use by the Complainant. A strong presumption therefore arises that the Respondent was aware of the Complainant and its trade mark when he registered the disputed domain name. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
Being a fanciful term, KLARNA is distinctive. The Respondent’s choice of the disputed domain name appears to be an attempt to prevent the Complainant from reflecting its trade mark in a corresponding domain name. Based on the evidence furnished by the Complainant, the Respondent appears to have been previously involved in another domain name dispute (NAF Claim No. FA1712001762776) over the registration of which incorporates a well-known third party trade mark. This suggests that the Respondent is engaged in a pattern of cybersquatting.
The Respondent has not categorically denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances of this case, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: December 1, 2018
Full & Egal Universal Law Academy