Decision for dispute CAC-UDRP-106108

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

• International trademark registration no. 1066079 “KLARNA” registered on December 22, 2010;
• EU trademark registration no. 009199803 “KLARNA” registered on December 7, 2010;
• EU trademark registration no. 010844462 “KLARNA” registered on September 25, 2012;
• International trademark registration no. 1182130 “KLARNA” registered on August 2, 2013;
• EU trademark registration no. 012656658 “KLARNA” registered on July 31, 2014;
• US trademark registration no. 4582346 “KLARNA” registered on August 13, 2014.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a Swedish e-commerce company that was established in in 2005. The Complainant Company has a workforce of over 5,000 employees. As of 2011, about 40% of all e-commerce sales in Sweden went through the Complainant. It is currently one of Europe’s largest banks and is providing payment solutions for over 150 million consumers across 500,000 merchants in 45 countries. In 2021, the company generated $80 billion in gross merchandise volume. 

The Complainant places great value on its Intellectual Property Rights and has been diligent in protecting its intellectual property and in preventing the unauthorized use thereof. Since 2016, it has been successful in over 50 UDRP matters including <klarnapay.biz> (CAC-UDRP-105594),  <theklarnagroup.com> (CAC-UDRP-105514), <klarna-apps.net> (CAC-UDRP-105513), <klarna-gateway.com> (D2021-0756), <klarnaclicks.se> (D2021-0002), <klarnarewards.com> (D2020-2514), <klarna.site> (D2019-1325), <klarna.co> (DCO2017-0006), <payklarna.com> (D2017-0220) and so on. 

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant has been in existence since 2005 and is the only one in the world to have conceived and adopted the mark KLARNA. That is, the Complainant has exclusive rights to the mark KLARNA. The said mark KLARNA has been openly, continuously and extensively used globally for the last numerous years and has thus acquired secondary meaning. 

The Complainant holds registration for the trademark KLARNA under different classes - 9, 35, 36, 39, 42, 45 in multiple jurisdictions around the world since 2010.

The Complainant’s registered trademark KLARNA is clearly recognizable within the disputed domain name. The registration and the use of the confusingly similar disputed domain(s) is a direct infringement of the legitimate rights held by the Complainant in the mark KLARNA. Where the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview 3.0, section 1.8).

The mere addition of a term to a trademark in a domain name does not avoid a finding of confusing similarity. This has been held in many UDRP cases.

Lastly, the addition of the gTLD “.com” in the disputed domain name does not differentiate the disputed domain name from the trademark (WIPO Overview 3.0, paragraphs 1.7 and 1.11). 

The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

The Respondent is not affiliated with/authorized by the Complainant in any way to make use of the KLARNA mark, while the Complainant has exclusive rights to the trademark KLARNA.The Complainant has painstakingly built up a good reputation and has invested a substantial amount of resources in promoting its product under the KLARNA mark the world over. The disputed domain name has a recent registration as of August 13, 2023, while the Complainant has been using the brand KLARNA for over fifteen years. The Complainant’s registered mark is a distinctive term, exclusively associated with the Complainant only that one would not legitimately choose as a domain name without having specific rights to such combination. Considering the worldwide reputation of the KLARNA marks in the financial industry, one finds it hard to conceive that the Respondent would have chosen and registered the disputed domain name without having been aware of the Complainant’s trademarks.

It is extremely difficult to foresee any legitimate use that the Respondent may have with the passively held disputed domain name, which combines the mark KLARNA with the keywords ‘PAY SECURE’. A similar combination is already in use by the Complainant in other domain names it owns like <klarna-pay.com> and <klarnapay.com>. The Respondent's use of the trademark plus the term ‘pay’, seems to indicate, on the balance of probabilities, that the Respondent not only was aware of the Complainant but deliberately targeted the Complainant to benefit from the appearance of legitimate association to the Complainant and confuse Internet users as to the source of sponsorship. A practice like this can never be considered a bona fide offering under the Policy.

The disputed domain name registered by the Respondent is clearly intended to exclusively “pass off” as the Complainant in the near future and have a free ride on its reputation and goodwill. The Respondent cannot be said to have legitimately chosen to use the domain name unless it was seeking to create an impression of an association with the Complainant. Since there is no such authorized association, the Respondent’s use of the domain name cannot be said to be legitimate. 

The Respondent is indeed not making any legitimate or fair use of the domain name but is holding the domain name passively with an intention for commercial gain to misleadingly divert consumers and tarnish the trademark at issue, given the distinctive nature of the mark and the huge popularity of the Complainant and its trademark KLARNA. 

In view of the prior rights of the Complainant in the trademark KLARNA and the enormous goodwill and reputation vested in the trademark, it is evident from the above assertions that the sole purpose behind the Respondent in registering the disputed domain name is to take undue advantage of the Complainant’s mark KLARNA.

The disputed domain name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

According to the Complainant, the following factors contribute to establishing the Respondent’s bad faith conduct in the circumstances of this case:

Actual or Constructive Notice
 
The registration of a domain name that is confusingly similar to another’s mark, despite actual or even constructive knowledge of the mark holder’s rights, constitutes bad faith registration and use.

Even a preliminary search over the Internet or survey among the public in general reveals that the “KLARNA” brand is associated with the Complainant and it has been used by them in their trade and business for over the last decade. Given the immense popularity and goodwill enjoyed by the Complainant's trademark globally by virtue of its open, continuous and extensive use and its impeccable market reputation, it is clear that the Complainant’s trademark is well-known and the Respondent knowingly chose to register and use the disputed domain name to divert customers and drawing damaging conclusions as to the Complainant’s operations through the disputed domain name, thus can adversely affect the Complainant’s goodwill and reputation and its right to use the disputed domain name.

Passive Holding

Given the facts as to unused domain name also satisfies the doctrine of passive holding. It is evident that the disputed domain name has never been put to use, such a passive holding of the domain name constitutes bad faith use under the Policy.

Implied Affiliation

Moreover, any person or entity using the mark / name KLARNA (with related keywords) in any manner is bound to lead customers and users to infer that its product or service has an association or affiliation with the Complainant and lead to confusion and deception. 

Opportunistic Bad Faith
 
It is a settled law that registration of identical or confusingly similar domain name that is patently connected with a particular trademark owned by an entity with no connection with the trademark owner is indicative of opportunistic bad faith as understood in the Policy. With regard to famous brands, successive UDRP panels have found bad faith registration, where:

1. Complainant's name was famous at the time of registration.
2. Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.
3. The very use of the domain name by Respondent who had no connection whatsoever with Complainant's mark and product suggests opportunistic bad faith.

Respondent:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. The respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.