The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Himanshu Kumar Goel, Medisu Health Solutions, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2020. On August 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amended Complaints on August 25, 2020. The Center verified that the Complaint, together with the amended Complaints, 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 August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2020. On September 10, 2020, the Respondent requested an automatic extension under paragraph 5(b) of the Rules and requested an additional extension due to the ongoing COVID-19 circumstances. Pursuant to paragraph 5(b) and 5(e) of the Rules, on September 11, 2020, the Center extended the Response due date until September 25, 2020. The Response was filed with the Center on September 26, 2020. The Center appointed Maninder Singh as the sole panelist in this matter on October 1, 2020. 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 statutory body constituted in April 1957 by the Government of India, in terms of and in accordance with an Act passed by the Indian Parliament viz. Khadi and Village Industries Commission Act of 1956 (“the 1956 Act”). It is engaged in the promotion and development of the KHADI products with the brand KHADI. These activities are carried out by the Complainant in relation to KHADI products under the KHADI trademark through the institutions certified by the Complainant. The Complainant, has adopted the trademark KHADI (which forms a part of its tradename, corporate name and trading style) on September 25, 1956 and the same has been in use continuously till date. The Complainant owns several registrations in different jurisdictions for the mark KHADI, including International Registration No. 1272626 registered on December 2, 2014, and Indian Registration No. 2851524 registered on November 27, 2014, with a first use date of September 25, 1956. The KHADI trademarks are also registered in various other jurisdictions/regions and are owned by the Complainant. The Respondent in the present dispute has registered the disputed domain nameon December 3, 2012. The Respondent uses the disputed domain name to advertise products under the mark KHADI. Also, pay-per-click advertisements appear on the website. 5. Parties’ Contentions A. Complainant The Complainant in its Complaint has, inter-alia, raised the following contentions: The Complainant is stated to have been established under the Ministry of Micro, Small and Medium Enterprises (“MSME”), Government of India with objectives to provide employment in rural areas, producing saleable articles and creating self-reliance amongst people. It has been contended that the Complainant, in April 1957, had taken over the work of former All India Khadi and Village Industries Board. The Complainant plays an important role in Indian economy with generation of employment in about 2.48 lakh villages in India. Its head office is in Mumbai, and its six zonal offices are in Delhi, Bhopal, Bangalore, Kolkata, Mumbai, and Guwahati. Besides and in addition to its zonal offices, it has offices in 28 states in India for the implementation of its various programs. The Complainant owns numerous registrations and applications for the word mark KHADI and device marks. The Complainant has annexed a list of few of the registered KHADI trademarks in India along with copies of the registration certificates. The Complainant is engaged in the promotion and development of the KHADI brand and the products under the KHADI trademark through the institutions certified by the Complainant. The Complainant has adopted the trademark KHADI (which forms a part of its tradename, corporate name and trading style) on September 25, 1956, and the same has been in use continuously till date. It is the case of the Complainant that by virtue of its adoption of KHADI mark, more than 60 years ago, and extensive use thereof, the trademark KHADI has become exclusively and globally associated with the Complainant in the eyes of consumers. The Complainant being the owner of the mark KHADI has contended that it authorizes various retail sellers, organizations, societies, and institutions to sell products under the KHADI trademarks. In order to be listed as an authorized user of the KHADI trademarks for purpose of sales and promotions of KHADI certified products and services, each organization has to apply for recognition through the Khadi Institutions Registration & Certification Sewa (KIRCS). It is contended by the Complainant that there are about seven sales outlets directly owned by the Complainant out of 8,050 sales outlets spread across the country all selling authorized/ licensed products under the KHADI trademarks. The KHADI trademarks are prominently featured on boards and hoardings of each store that is authorized to sell products under the KHADI trademarks. The Complainant further contends that the Complainant’s KHADI trademarks are prominently featured on all the products sold by the Complainant in India and beyond. The Complainant contends that the Complainant’s products bearing the KHADI trademarks are sold and showcased through exhibitions in various parts of the world. The Complainant participates in several exhibitions and fairs to promote products and services under the KHADI trademarks and to encourage artisans, spinners, and weavers of India. Further, the Complainant contends that it has always remained actively involved in the community service in its efforts to further promote its products and services under the KHADI trademarks including sponsorship and organization of various events, competition and shows. The Complainant states that for the purposes of promotion of the KHADI trademarks, the Complainant has been undertaking various initiatives including collaboration with the 14th edition of the Lakme Fashion Week, in which collections were made by four designer labels under the trademark KHADI and the same were exhibited during a designated Sustainable Fashion Day at Lakme Fashion Week on August 23, 2018. Further, the Complainant has also partnered with brands such as RAYMOND and TITAN to promote the products under the trademark KHADI in the Indian and global markets. The Complainant has contended that its products under the KHADI trademarks have been widely promoted through print and electronic media, including television programs, advertisements, articles, write-ups appearing in leading newspapers, magazines, journals, shopping festivals, exhibitions. In addition, the Complainant also claims to operate several social media platforms, such as Facebook, Twitter, YouTube, etc. all of which enjoy a wide followership. The Complainant also operates a mobile application by the name of “Khadi India” to help customers, patrons and members of trade in locating the nearest Khadi India Store. The Complainant contends that years of continuous efforts, time, capital, painstaking efforts and resources have been invested pursuant to which the KHADI trademarks have attained immeasurable goodwill and reputation so much so that the KHADI trademarks have attained paramount position and are identified exclusively with the Complainant and members of trade now recognize and associate the goods and services under the KHADI trademarks with the Complainant and none other. Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the trademark or service mark of the Complainant: The Complainant contends that the disputed domain name wholly contains the Complainant’s trademark KHADI and is therefore identical to the Complainant’s trademark/trade name KHADI. The Complainant contends that the Respondent registered this disputed domain name several years after the adoption of the trademark KHADI by the Complainant. Furthermore, the trademark KHADI has not been used by anyone other than the Complainant or its authorized license or franchise holders. The Respondent is not a licensee or franchisee of the Complainant and has adopted the identical trademark with a view to ride upon the goodwill associated with the Complainant’s well-known trademark KHADI and pass off his goods/services as that of the Complainant. The Complainant also contends that due to the fame and reputation associated with the trademark KHADI, the first impression in the minds of the consumers shall be that the Respondent’s website originates from, is associated with, or is sponsored by the Complainant. The Complainant contends that the use of the mark KHADI, in which the Complainant has both statutory and common law rights, clearly shows the mala fides of the Respondent to create an impression in the minds of the consumers that it is connected to the Complainant. The registration of a domain name containing the Complainant’s trademarks KHADI does not render the disputed domain name distinguishable from that of the Complainant. The Complainant in this regard, has referred to and relied upon the UDRP decisions in the cases of: (i) Roper Industries, Inc. v. VistaPrintTechnologies Ltd.,WIPO Case No. D2014-1828, (ii) La Mafafa Inc. dba Cultura Profética v. Domains Real Estate,WIPO Case No. D2009-0534, (iii) Fairview Commercial Lending, Inc. v. Aleksandra Pesalj,WIPO Case No. D2007-0123, (iv) Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 and (v) Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786, (vi) Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314. In all the decisions cited above, the panels upheld the rights of the complainants in the unregistered trademarks against the unauthorized use of the same in domain names by the respondents and consequently transferred the disputed domain names in favour of the complainants. The Complainant contends that mere addition of generic term “just” to the Complainant’s trademark KHADI clearly shows the mala fides of the Respondent to create an impression in the minds of the consumers that it is connected to the Complainant. The Complainant relies upon the UDRP decisions in: (i) Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; (ii) Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275 where it was found that the addition of dictionary terms does not serve to distinguish the domain name from the trademark, but rather, would reinforce the association of the trademark with the domain name. The Complainant further contends that the generic Top-Level Domain (“gTLD”) “.com” does not grant the disputed domain name distinctiveness regarding the trademark KHADI. The Complainant in its submission relies upon Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001which held “The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain names is irrelevant and immaterial for purposes of assessing confusing similarity with the Complainant’s trademarks (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541)”. The Complainant has contended that besides the evident mala fide adoption of an identical trademark in the disputed domain name, there are several references to the Complainant and its trademark KHADI in the disputed domain name: (i) The home page contains tabs of several categories of products under the headings “Gift Pack”, “Oil”, “Skin Care” and many others. All products listed under these headings are represented falsely as “Khadi” Products. (ii) A static image is posted comprising the word “Just Khadi.com” on the pages under the tabs Home, All Categories, About Us, International Office, Privacy Policy, Terms and Condition, Disclaimer Policy, Cancellation Policy and Shipping and Delivery Policy. It is the contention of the Complainant that there is no material content, physical address or a store address on the website apart from the above-mentioned information. It appears that, the places where the Respondent intended to mention the address are deliberately kept blank and highlighted. Further, at some places in the abovementioned policies, the Respondent has inadvertently referred to the disputed domain name Contentions regarding the Respondent having no rights or legitimate interests in the disputed domain name: The Complainant contends that the disputed domain name has not been used in connection with bona fide offering of goods or services by the Respondent. The disputed domain name has insteadbeen used to advertise goods and services in violation of the trademark rights ofthe Complainant. The Respondent is using the disputed domain name to advertisehis products under the mark KHADI, misleading the consumers into believingthat the disputed domain name is in some manner affiliated to theComplainant by using the term “khadi” in conjunction with the dictionary word“just”. The Complainant also contends that the Respondent registered the disputed domain name solely for misleadingconsumers. Since the registration of the disputed domain name on December 3, 2012, the Respondent has failedto establish any demonstrable preparation to use or actually use the disputed domain namefor any legitimate purposes. However, on the other hand, the wrongful andmisleading advertisements and the products appearing on the disputed domain name demonstrates the Respondent’s intention of commercial use of thewebsite to have unlawful gains. Thus, the question of being known by the disputed domain namedoes not arise in the first place. The Complainant further contends that none of the exemptions provided under paragraph 4(c) of the Policy apply in the present circumstances. TheComplainant has not authorised, licensed, or permitted the Respondent to registeror use the disputed domain name or to use the KHADI trademark. The Complainant hasprior rights in the KHADI trademark, which precede the registration of thedisputed domain name by the Respondent. The Complainant submits that it has established a prima facie case that the Respondenthas no rights and legitimate interests in the disputed domain name and thereby theburden of production shifts to the Respondent to produce evidence demonstrating rightsor legitimate interests in respect of the disputed domain name. The Complainant has referred to and relied upon UDRP decisions in: (i) Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; (ii) Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Complainant contends that the above-mentioned facts make it evident that the Respondent has not hosted any legitimate content on the website. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s prior trademark KHADI. Instance of such acts are as below: The Respondent has posted a static image comprising the words “just KHADI .com” on each page of the website. At the homepage of the said website, the Respondent has posted a link to their Twitter handle by the name “just KHADI”, Facebook page by the name “Khadi/Ayurveda” and Pinterest account by the name “justKHADI India”. At the homepage, the Respondent has also posted an email address and a contact number. The said website also has an “International Office” page where a certain Canadian address is mentioned. That said, the website also lets customers purchase products allegedly labelled KHADI. The Complainant has contended that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online locations such as his Facebook and Twitter page, by creating a likelihood of confusion with the Complainant’s prior registered mark KHADI as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of product on the Respondent’s website. The Complainant contends that the pay-per-click advertisements appearing on the Respondent’s website show the mala fide intentions of the Respondent to monetize the disputed domain name and derive profits from passing off as the Complainant by taking unfair advantage of the Complainant’s colossal fame and reputation. The Complainant in this regard relies upon: (i) Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; (ii) Tata Sons Limited v. Randy Ulring,WIPO Case No. D2015-1066; (iii) Facebook Inc. v. Puneet Agarwal,WIPO Case No. D2017-1491 holding that pay-per-click advertisements constitutes bad faith use because the Respondent is attracting Internet users to its website by causing confusion as to whether its website is, or is associated with the Complainant or its services. The Complainant further contends that the sole purpose of the registration of the disputed domain name by the Respondent is to misappropriate the reputation associated with the Complainant’s famous trademark KHADI. The Complainant has not authorized the Respondent to use its trademark/trade name/trading style. The Respondent has no rights or legitimate interests in the term “khadi”. There is no other meaning associated with that term other than in relation to the Complainant. Further, several references to the Complainant’s trademark KHADI and the advertisements and products appearing on the Respondent’s website demonstrate the Respondent’s intention of commercial use of the website to have unlawful gains. Contentions regarding bad faith registration and use of the disputed domain name by the Respondent: The Complainant reiterates that the disputed domain name is identical to the Complainant’s trademark/trade name/trading style KHADI. The Respondent cannot have any rights or legitimate interests in the disputed domain name. The primary aim of the Respondent is to disrupt the business of the Complainant as well as take advantage of the goodwill and reputation associated with the Complainant’s trademarks. The Complainant contends that the Respondent had registered the disputed domain name for the sole purpose of designing the website to mislead the consumers. By doing so, the Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Complainant has contended that the Respondent registered the disputed domain name in bad faith to profit from the reputation of the Complainant. The Complainant contends that paragraph 2 of the Policy implicitly requires a registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. The obligations imposed by paragraph 2 are an integral part of the Policy applicable to all registrants, cannot be ignored as was observed by the UDRP panel in City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643. Hence, the Respondent had an onus to ensure that the registration of the disputed domain name did not violate the Complainant’s trademark rights. The Complainant contends that owing to the well-known nature of the Complainant’s trademark KHADI, prior statutory registrations and the well-established reputation and goodwill associated to it, the Respondent cannot credibly claim to have been unaware of the mark. The Complainant contends that there is a great likelihood that actual or potential visitors to the present website of the Respondent will be induced to believe that the Complainant has licensed their trademark/trade name/trading style KHADI to the Respondent or authorized the Respondent to register the disputed domain name or that the Complainant has licensed their trademark/trade name/trading style KHADI to the Respondent or authorized the Respondent to sell and advertise products under the trademark KHADI or that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant. The Complainant has contended that the above instances clearly demonstrate the bad faith of the Respondent’s and that the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent in his Response to the Complaint, inter-alia, submits the following: The Respondent is currently residing in Canada, and the office address at the disputed domain name belongs to the Respondent. He has just recently incorporated a company in Canada, namely, Fitnox Overseas Inc. The Respondent submits that the business name mentioned in the WhoIs as Medisu Health Solutions was the name of older business before the disputed domain name was registered by the Respondent and his associate Mr. Pratap Singh on December 3, 2012, and the same is reflected in the WhoIs records since the registration in 2012. The Respondent contends that the above facts and various company names, clearly reflect that the Respondent is engaged in health related fields for the last decade. To serve the public interest, the Respondent came up with the unique idea of providing a platform where health products branded as KHADI can be made available to the public and hence registered the disputed domain name in 2012 in its descriptive sense. Later in April 2013, the Respondent also registered the similar domain name The Respondent contends that the “archive.org” page for the disputed domain name from 2015 and also the “Indiamart” page (member since December 2013) for the Respondent’s company show the following declaration: “Justkhadi – A platform ensuring fair trade policy for rural & handmade manufacturers as well as customers. We bring to your door steps the power of ancient & natural Indian herbs and natural products. We offer registered Khadi products of premium quality manufactured in various parts of the country under one roof. We also provide natural organic products.” The Respondent also contends that the Respondent very clearly declared that he was offering for sale registered KHADI products of various manufacturers, at the disputed domain name’s website and that over the years, the Respondent has sold KHADI products of Khadi Natural, Manav Khadi Herbal, Parvati Khadi Gramudyog, The Atta Khadi Gramudyog Society, Vagad’s Khadi, Kangra Hills Care & Cure Products, etc., that is, from the sellers who were already registered with the Complainant only. The Respondent contends that the Complainant has no monopoly over the generic term “khadi” or even the descriptive term contained in the disputed domain name, whatsoever. The Respondent contends that the Respondent registered the disputed domain name in good faith in its descriptive sense, purely because “khadi” is a widely used common term in the absence of the Complainant’s mark (which never existed till 2015), and in any case, the Respondent has never referred to the Complainant or its graphical mark or tried to show any association with the Complainant unnecessarily. The Respondent denies that the Respondent, in any illegal manner or without the Complainant’s authority, has registered the disputed domain name containing the keyword “khadi”. It is the further contention of the Respondent that “khadi” is a generic word used for the last 100 years in India and at the time of registration of the disputed domain name, the Complainant being a Government Organization, it was just serving social objectives for promotion of cloth only, that too, in rural areas and there was no trademark applied till November 2014. Further, there are various other websites rendering services using the word “khadi” in domain names. The Respondent further contends that section 2(d) of the 1956 Act defines “khadi” as any cloth woven on handlooms in India from cotton, silk or woolen yarn handspun in India or from mixture of any two or all of such yarns. The Respondent also contends that the Complainant has failed to provide any information about itself, which could establish that in 2012 when the disputed domain name was registered by the Respondent, the Complainant’s trademark was particularly in existence, let alone that the Complainant had any exclusive rights in the mark. At no time prior to the registration of the disputed domain name and putting the disputed domain name to use, the Respondent was aware of the Complainant‘s mark. The Respondent further contends that in any case, the Respondent is commonly known by the disputed domain name as after having registered the disputed domain name on December 3, 2012, the Respondent initiated the steps of incorporation of a company with limited liability under the Indian Companies Act, along with his associate at Delhi. On July 16, 2013, the company Just Khadi India Private Limited was successfully incorporated with the Respondent being one of the directors. Hence, when the Respondent has shown demonstrable use of the disputed domain name, and moreover, he is commonly known by it. The disputed domain name is not identical or confusingly similar to a mark in which the Complainant alleges enforceable rights The Respondent contends that the trademark of the Complainant has been applied since 2014, while the Respondent has been using the “Khadi” word since 2012, with the registration of the disputed domain name in December 2012 and incorporation of the company Just Khadi India Pvt. Ltd. in July 2013, approved by the Ministry of Company Affairs, Government of India itself. The Respondent denies that the Complainant has any rights in the trademark in each and every class since 1956, as a government in any country may establish various organizations/commissions to regulate various sectors. Even the functions of the Complainant’s organization in terms of the law just included regulation of the “Khadi” cloth in rural areas. The same stance has been taken by a German company owner at The Respondent has submitted various invoices of purchases made from various sellers evidencing genuine products being sold through the website under the fair use policy as discussed herein below. The Respondent submits that “www.justkhadi.zepo.in” is a platform used for development of the ecommerce website at the disputed domain name. The same can be accessed at the above link as well. There is some unpublished information due to bugs in the The Respondent submits that in any case, KHADI is used by numerous businesses around the world and does not exclusively belong to the Complainant. The Respondent has referred to a UDRP decision in Rollerblade, Inc. v. CBNO and Ray Redican,WIPO Case No. D2000-0427, holding that “genericness, if established, will defeat the claim of trademark rights, even in mark which is subject of an incontestable registration”. The Respondent has rights and legitimate interest in the disputed domain name The Complainant denies that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent contends that for the Complainant to meet this part of the three-part test, the Panel must find that the Respondent has “a total lack of any right or legitimate interest”; not merely that the Complainant has purported “better” right or legitimate interest. A finding that the Complainant has “better” legitimate interest is clearly insufficient. The Respondent in this regard has referred to a UDRP decision in Borges, S.A., v. James English,WIPO Case No. D2007-0477, which held that “Respondent need only show that he has “a” legitimate right or interest – which is what he has done. Respondent does not need to show that his rights or legitimate interests are better (however measured) than those of Complainant”. The Respondent claims that the Respondent does have rights and legitimate interests in the disputed domain name. This interest stems from the fact that disputed domain name consists of two common dictionary words that when combined, as in “Just Khadi”, have a clearly descriptive and well-known meaning. The Respondent contends that the combination of “Just” and “Khadi” was adopted by the Respondent in 2012-13 to indicate the intention to deal with “Khadi” products, clearly descriptive of Khadi Products, while the Complainant had not even applied for the trademarks till November 2014. The Respondent further contends that it has been long-held that where a domain name is descriptive, the first person to register it in good faith is entitled to the domain name, and that this is considered a “legitimate interest”. The Respondent has referred to and relied upon UDRP decisions such as Zero Int'l Holding v.Beyonet Servs,WIPO Case No. D2000-0161, holding that “Common words and descriptive terms are legitimately subject to registration as domain names on ‘first-come, first-served’ basis”). The Respondent claims that the Respondent was the first in the world to use the said combination of generic words in December 2012, though inspired by Shri Mahatma Gandhi’s swadeshi revolution, which inspired Indian citizens to “Just go for Khadi”, 100 years back. Moreover, with the incorporation of the company Just Khadi India Private Limited, the rights in the disputed domain name were further secured and recognized by the Ministry of Company Affairs, Government of India. While only in 2014 and onwards, the Complainant filed its first trademark for the word “Khadi” in English language on November 27, 2014; further “Khadi” in Hindi language on December 2, 2014; and lastly “Khadi India” on June 19, 2018. The Respondent contends that the Respondent made various purchases in the name of Just Khadi India Pvt Ltd till June 2018, however, the name of the company was struck off from the Registrar Records in mid-2018 only. As per the said Public Notice No- ROC-DEL/248/STK-5/2018/2912, the company struck off over 31,000 registered Companies. That is, the Company was in existence since July 2013 to June 2018 and since then it has been operated as proprietorship by the Respondent, along with his associate Mr. Pratap Singh (ex-director) who is located at New Delhi and various invoices are still issued in the name of Just Khadi. Further, at various platforms like Indiamart and Amazon, it was already listed as Pvt. Ltd company, while at Rediff and Shiprocket.social (where the products are still listed)and social media accounts like Facebook, Twitter and Pinterest still refer to the Respondent as “Just Khadi” or “Just Khadi India”. That is, even as on date the Respondent is commonly known by the disputed domain name on continuous basis. The Respondent contends that UDRP case law provides for such situations where legitimate interest has been found to exist on the part of domain name registrant, when the domain name consists of combination of two very common words. The Respondent contends that the term “Khadi” is longstanding and ubiquitous descriptive term referring mainly to handwoven and hand spun cloth and referred in the same fashion in the 1956 Act as well. It originates back to the 1920s when Father of the Nation (India) Shri Mahatma Gandhi encouraged handloom movement against foreign cloth, known as the “Khadi Movement”. The Respondent also submits that a Google search for “Khadi” shows hundreds of results, of which only handful are related to the Complainant. The Respondent contends that it is a common term adopted by various companies around the world, with the majority of them in India, who may be dealing in Khadi as cloth or using Khadi as brandable term for their products like “www.khadi.de”, who also have trademark rights in the term and also registered live trademarks at the United States Patent and Trademark Office as well. Then there are active websites such as “www.khadi.com”, “www.khadi.net”, “www.khadi.london”, “www.khadinatural.com”, “www.kkhadi.com”, “www.omkhadi.com”, “www.khadibrand.in” and over 2,000 domain names registered with the generic word “khadi” and who are dealing in Khadi products. The Respondent contends that the Complainant has no exclusive rights to the use of the said generic words and as result has no standing in these UDRP proceedings. Further, where the disputed domain name is generic/descriptive term, it is difficult to conclude that there is deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them. The Respondent also contends that the company incorporated as Just Khadi India Pvt Ltd. in July 2013, matches the disputed domain and hence, the matter is protected under paragraph 4(a)(ii) of the Policy: “Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights.”Reference has been made to decisions in various cases viz. Avon Products, Inc. v. Jenika Mukoro, Heirs Holdings,WIPO Case No. D2018-1195; General Electric Company v. Estephens Productions,WIPO Case No. D2009-1438; VeriSign Inc., v. VeneSign C.A.,WIPO Case No. D2000-0303. The Respondent also contends that the demonstrable use of the disputed domain name in terms of paragraph 4(c)(i) of the Policy is evident at the disputed domain name, which passes the nominative fair use of a trademark test as laid down by the Hon’ble High Court of Chennai in the matter of Consim Info Pvt. Ltd. Vs. Google India Pvt. Ltd. and Ors [2010 (6) CTC 813] while referring to the cases of New Kids on the Block v. News Am. Publ’g Inc., 971 F.2d 302, 308 (9th Cir. 1992). The Respondent denies that any CPC links or ADs are being shown at the disputed domain name but mainly brand links to its social media posts. The Respondent contends that the social media accounts of the Respondent have been legitimately created and exist since 2013 and are still active indicating that the Respondent is commonly known by the disputed domain name. Further, the Canada address is that of the Respondent, where he is currently located and rightly the website permits users to purchase the products labelled as “Khadi” in descriptive sense and is protected as fair use. The Respondent also contends that the Complainant has not made prima facie case that the Respondent lacks rights or legitimate interests as the Complainant’s rights post-date registration of the disputed domain name. Further, the Respondent is commonly known by the disputed domain name and demonstrable use at the disputed domain name is quite evident. The Complaint should be dismissed on this ground alone and the bad faith clause need not be analyzed in terms of precedents. The disputed domain name was not registered or used in bad faith The Respondent contends that in order to prove bad faith registration, it must be shown that the Respondent registered the disputed domain name notbecause of its common generic or descriptive meaning referring to “just khadi”, but rather specifically because it corresponded to protected trademark. Here simply no evidence whatsoever to support the Complainant’s limited contention that the disputed domain name was registered because of the Complainant’s trademark as it never existed in 2012. The Respondent contends that the 1956 Act just regulated “Khadi” cloth in rural areas. The disputed domain name has been registered since December 2012 and the Respondent also registered The Respondent further contends that it is quite important to establish that the disputed domain name was registered in bad faith, in addition to the bad faith use, that is both should be proved separately. The Respondent in this regard, has referred to and relied on decisions in the matter of (i) Teradyne, Inc. v. 4tel Technology,WIPO Case No. D2000-0026(“it was not the intent... to extend the definition of ‘abusive registration’ to include domain names originally registered in good faith”); (ii) Weatherall Green & Smith v. Everymedia.com,WIPO Case No. D2000-1528, Substance Abuse Management, Inc. v. Screen Actors Models [sic] International, Inc. (SAMI),WIPO Case No. D2001-0782 (“If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”). The Respondent has further contended that the evidence convincingly demonstrates that “khadi” is widely used for its descriptive value and there has been no evidence provided, which even purports to show that the Respondent actually was aware or ought to have been aware of the Complainant’s non-existent rights in the mark KHADI in 2012. The Respondent contends that the Complainant is just a government organization with social obligations towards its citizens, which was formed for regulation of Khadi cloth manufacturers/producers in rural areas. The Respondent legally incorporated the company by similar name Just Khadi India Pvt Ltd, which statutory recognized the keywords contained in the disputed domain name. In 2013, the Respondent also registered In response to the Complainant’s contention that paragraph 2 of the Policy implicitly requires the registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, the Respondent submits that for the same to happen, the Complainant’s trademark should have existed in the Trademark Registry’s database, however, the same was applied 2014 onwards only. The 1956 Act is law, but the same protects the Khadi as cloth only, that too in public/social interest and not as a commercial activity. Further, the 1956 Act does not make reference to any further products produced by it, so as to claim reputation under each and every trademark class since 1956. For example, under class 42, the Complainant’s mark shows as using Khadi for software development since 1956, while software has been first reported to be used in the world in 1975 by Mr. Bill Gates. The Respondent wonders how come the Complainant started software development in 1956. In case, the Complainant made class 99 application, it still needs to reflect the real usage under each and every class. The Respondent contends that other than asserting future trademark registration for logo/image/device mark under various trademark classes, no information is provided about the Complainant’s business, reputation, sales volumes, advertising, marketing, revenue, or any other facts which could establish that the Complainant and its unregistered mark was particularly well known in commercial sense when the disputed domain name was acquired in December 2012 in each and every class of activity. Further, the promotional material annexed is undated, or has been post 2015 or onwards only. That in no way, proves bad faith registration. The Twitter account for the Complainant was created in August 2015, while Facebook page on July 31, 2014 and lastly owns Google Play applications, which does not seem to be popular among the public. The Respondent’s further contention is that the Complainant applied for its trademark on November 27, 2014 for KHADI, while the disputed domain name was registered on December 3, 2012 and also the Respondent had already incorporated the company in July 2013. The Respondent, thus, contends that the disputed domain name was not registered in bad faith. The Respondent submits that the website at the disputed domain name has been used in a descriptive sense, where Khadi products are being sold and it is protected as nominative fair use of a trademark test as laid down by the Hon’ble High Court of Chennai in the matter of Consim Info Pvt. Ltd. Vs. Google India Pvt. Ltd. and Ors [2010 (6) CTC 813] while referring the cases of New Kids on the Block v. News Am. Publ’g Inc., 971 F.2d 302, 308 (9th Cir. 1992); Caims v. Franklin Mint Co. 292 F.3d 1139, 1153-55 (9th Cir. 2002). The Hon'ble High Court of Chennai, India held that: “A use is considered to be a permitted nominative fair use, if it meets three requirements, viz., (i) the product or service in question must be one not readily identifiable without use of the trademark; (ii) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (iii) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” The Respondent further contends that UDRP matters equally uphold the “nominative fair use of a trademark” as held in the matter of New Kids on the Block v. News Am. Publ'g Inc., 971 F.2d 302, 308 (9th Cir. 1992). Nominative fair use has continuing validity in both UDRP proceedings and civil court actions. The Respondent has referred to various decisions in cases of Playboy Enters. V. Welles, 279 F.3d 796 (9th Cir. 2002); Horphag Research v. Mario Pellegrini, 328 F. 3d 1108 (9th Cir. 2003); Century 21 Real Estate v. Lendingtree, 425 F.3d 211 (3rd Cir., 2005); Toyota Motor Sales USA Inc. v. Tabari, 610 F.3d 1171(9th Cir. 2010); and Int’l Info. Sys. Sec. Certification Consortium, Inc. V. Sec. Univ., LLC, 823 F.3d 153 (2nd Cir. 2016). In the UDRP matter of Amylin Pharmaceuticals, Inc. v. Watts Guerra Craft LLP,WIPO Case No. D2012-0486, upholding the nominative fair use and declining the transfer. The Respondent contends that the Respondent has not made unnecessary reference to the Complainant upon its website, but only to the extent so that products can be identified and is protected under the principle of fair use. Further, the Respondent has been mainly selling the products that are already registered with the Complainant. Further, the Respondent also has its products listed at various websites at Indiamart, Rediff, Amazon, indicating it is commonly known by the disputed domain name. The Respondent also contends that Panel issue finding of Reverse Domain Name Hijacking (under paragraph 15(e) of the Rules) since there is no basis for this Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has furnished evidence of its rights in the trademark KHADI and common law rights have accrued to it through its long and substantial use of the mark not only in India but in certain other parts of the world. The Panel has considered the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for the trademark using the word “khadi”. There does not appear to be any doubt that the Complainant is the owner of the trademark KHADI. The Panel agrees that the Complainant has statutory and common law rights in the mark KHADI, and the disputed domain name of the Respondent is confusingly similar to that trademark. In this regard, attention of the Panel has been drawn to previous UDRP decisions in: (i) Roper Industries, Inc. v. VistaPrintTechnologies Ltd.,WIPO Case No. D2014-1828, (ii) La Mafafa Inc. dba Cultura Profética v. DomainsReal Estate,WIPO Case No. D2009-0534, (iii) Fairview Commercial Lending, Inc. v. Aleksandra Pesalj,WIPO Case No. D2007-0123, (iv) Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322, (v) Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786, (vi) Skattedirektoratetv. Eivind Nag,WIPO Case No. D2000-1314, wherein, the panels upheld the rights of the complainants in the unregistered trademarks against the unauthorized use of the same in domain names by the respondents and consequently transferred the disputed domain names in favour of the complainants. The Panel refers to the decision in the case of Advance Magazine Publishers Inc. v. Voguechen,WIPO Case No. D2014-0657, holding that – “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Panel finds merit in the contention of the Complainant that addition of the dictionary term “just” to the Complainant’s trademark KHADI does not avoid a finding of confusing similarity. In this regard, the Panel relies on the following decisions:- (i) Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; (ii) Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275 wherein it was held that addition of dictionary terms does not serve to distinguish the domain name from the trademark. The Panel also agrees with the Complainant’s contention that the gTLD “.com” does not grant the disputed domain name distinctiveness regarding the trademark KHADI. Attention of the Panel, in this regard, has been drawn to the decision in Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001 holding that “the addition of the generic Top-Level Domain (‘Gtld’) ‘.com’ to the disputed domain names is irrelevant and immaterial for purposes of assessing confusing similarity with the Complainant’s trademarks”. Further, the Panel also finds no merit in the Respondent’s contention that KHADI is used by numerous businesses around the world. The Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Panel is obliged to take notice of certain extremely relevant facts, available in the public domain, in relation to the mark KHADI. This mark in the Indian context and the freedom movement in India refers to hand-spun and hand-woven cloth. The raw materials may be cotton, silk, or wool, which are spun into threads on a “Charkha” (a traditional spinning implement). Khadi was launched in 1920 as a political weapon in the Swadeshi movement of Mahatma Gandhi (known as Father of the Indian nation). In order to promote village self-sufficiency, Gandhi popularized handspinning and made known khadi, hand-spun cloth, the “livery of freedom.” (Liukkonen, Petri. “Gandhi”. Books and Writers (kirjasto.sci.fi). Finland: Kuusankoski Public Library. Archived from the original on July 6, 2009). Khadi is sourced from different parts of India, depending upon its raw materials – while the silk variety is sourced from West Bengal, Bihar, Odisha, and North Eastern states, the cotton variety comes from Andhra Pradesh, Uttar Pradesh, Bihar, and West Bengal. Khadi poly is spun in Gujarat and Rajasthan while Haryana, Himachal Pradesh and Jammu and Kashmir karnataka are known for the woolen variety. There are a wide range of Khadi personal care products manufactured in Uttarakhand Khadi Products – Handmade and Natural. The common characteristic found in both Khadi and Village Industries is that they are labour intensive in nature. In the wake of industrialisation, and the mechanisation of almost all processes, Khadi and Village Industries are suited like no other to a labour surplus country like India. Another advantage of Khadi and Village Industries is that they require little or no capital to set up, thereby making them an economically viable option for the rural poor. This is an important point with reference to India in view of its stark income, regional and rural/urban inequalities. The Complainant, under the statutory scheme of the above-mentioned 1956 Act has three main objectives, which guide its functioning. These are: - The Social Objective – Providing employment in rural areas; - The Economic Objective – Providing saleable articles; - The Wider Objective – Creating self-reliance amongst people and building up a strong rural community spirit. The Complainant seeks to achieve these objectives by implementing and monitoring various schemes and programs. The process of implementation of schemes and programs starts at the Ministry of Micro, Small and Medium Enterprises in the Government of India, is the administrative head of the programs. The Ministry receives funds from the Central Government of India, and routes these to the Complainant for the implementation of programs and schemes related to Khadi and Village Industries. The Complainant herein then uses these funds to implement its programs either directly – through its 29 state offices (not 28 as contended in the Complaint), by directly funding Khadi and Village Institutions and co-operatives, or indirectly through 33 Khadi and Village Industries Boards, which are statutory bodies formed by the state governments within India, set up for the purpose of promoting Khadi and Village Industries in their respective states. The Khadi and Village Industries Boards, in turn, fund Khadi and Village Institutions/Co-operatives/Entrepreneurs. It is also a matter of public knowledge in India that at present the developmental programmes of the Complainant are executed through 5,600 registered institutions, 30,138 Cooperative societies and about 9,485,000 people. The entire concept and mark KHADI is extremely critical for the welfare and upliftment of the villagers in India. The constitution of the Khadi Development Boards and its functions having been taken over by the Complainant through the 1956 Act further acknowledges and establishes the importance of KHADI and the promotion of KHADI products in India. All these activities are directly relatable to the objectives sought to be achieved by the Parliament of India for the benefit of the villagers all over India. Having regard to contentions raised in the present Complaint as well as the critically significant nature of the above-mentioned relevant facts in the public domain in India, the Panel observes that the Complainant has made out a case proving its rights in the trademark KHADI. The Complainant enjoys goodwill and reputation for the marks/names registered by it. The Panel has no doubt that the disputed domain name incorporates the well-known and famous trademark KHADI of the Complainant by adding “just” to it. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to cash on/ride over the name, goodwill and reputation of the Complainant. The Panel observes that the Respondent is in no way related to the Complainant or its business activities – the Respondent is not an agent of the Complainant, nor does he carry out activities for the Complainant. On the other hand, the Complainant is obliged and is undertaking all such functions for amelioration/development of the downtrodden masses located in the villages in India. The mark KHADI, in the above-mentioned background, indisputably vests in the Complainant as evidenced by various statutory registrations not only in India but other jurisdictions as well, secured by the Complainant. The Panel observes that the Complainant has established that the disputed domain name has not been used in connection with bona fide offering of goods or services by the Respondent and the disputed domain name has been used to advertise goods and services in violation of the trademark rights of the Complainant. The Respondent is using the disputed domain name to advertise its products under the mark KHADI, misleading the consumers into believing that the disputed domain name is in some manner affiliated to the Complainant by using the trademark KHADI in conjunction with the dictionary word “just”. The word “khadi” has stood associated with the freedom movement of India under the leadership of Mahatma Gandhi. The word “khadi” along with “Charkha” (the spinning wheel) used by Mahatma Gandhi for strengthening the freedom movement with the concept of “Swadeshi” i.e. made locally to not to allow masses in India to become dependent upon the foreign products with industrialization in large part of Europe and America. This concept and mark KHADI had stood passed on to the Khadi Boards constituted through the 1956 Act. Contentions on behalf of the Respondent that he is prior in registration of the disputed domain name, is buying KHADI products from entities authorized and certified by the Complainant, incorporation of a company through another Ministry of the Government of India, the word “khadi” is descriptive and does not have any distinctive element, claiming nominative fair use, indiscriminate registration in all classes of trademark registration by the Complainant, other entities also registering different marks with the word KHADI, etc. are of no consequence inasmuch as the mark KHADI is exclusively associated with the Complainant and all rights in relation to the mark KHADI vest in the Complainant. The contentions to the contrary raised by the Respondent would not have any effect on the merit of the Complaint filed by the Complainant. The parity in illegality cannot be a defense. Even when it would be for the Complainant to initiate steps for ensuring the protection of the mark KHADI, which it is otherwise obliged to do as its duty and responsibility under the scheme of the 1956 Act and for the objectives to be achieved under said enactment, registration of other names with the word “khadi”, will not inure any benefits to the Respondent herein. The Panel has no doubt that in the above-mentioned context, the Respondent does not deserve to succeed with reference to his contention that there is no bad faith in registering the disputed domain name. The use of the word “khadi” in the disputed domain name, having regard to the contentions raised on behalf of the Complainant, would indisputably demonstrate an intention to reap commercial benefits by exploiting the mark KHADI belonging to the Complainant. The contention that the mechanism under the Policy for resolution of the present domain name dispute is not the appropriate forum deserves to be rejected in as much as the Complaint fulfills all the conditions to avail the opportunity under the UDRP and has correctly approached through the present Complaint for redressal of its grievance in relation to the disputed domain name. The Panel agrees that the Respondent registered the disputed domain name solely for misleading consumers. The Respondent has failed to establish any demonstrable preparation to use or actually use the disputed domain name for any legitimate purposes. Further, advertisements and the products appearing on the Respondent’s website demonstrate the Respondent’s intention of commercial use of the website to have unlawful gains. The Panel observes that the Respondent is in no way related to the Complainant or its business activities – the Respondent is not an agent of the Complainant, nor does he carry out activities for the Complainant as the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the KHADI trademark. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name. The Panel has taken note of the fact that pay-per-click advertisements are appearing on the Respondent’s website, which show the mala fide intentions of the Respondent to monetize the disputed domain name and derive profits from passing off as the Complainant by taking unfair advantage of the Complainant’s huge reputation and goodwill. The Panel relies upon the decisions in: (i) Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; (ii) Tata Sons Limited v. Randy Ulring,WIPO Case No. D2015-1066; (iii) Facebook Inc. v. Puneet Agarwal,WIPO Case No. D2017-1491 where it was observed that pay-per-click advertisements could constitute bad faith use when a respondent is attracting Internet users to its website by causing confusion as to whether its website is, or is associated with the complainant or its services. The Panel finds no merit in the argument of the Respondent that the Complainant has failed to provide any information about itself, which could establish that in 2012, when the disputed domain name was registered by the Respondent, the Complainant’s trademark was particularly in existence. The trademark registration certificates from the Intellectual Property Office of India clearly state that the date of first use of the Complainant’s trademarks is September 25, 1956. The Panel has no doubt that the Complainant has prior rights in the KHADI trademark owing to its long and extensive use for many decades, which precedes the registration of the disputed domain name by the Respondent and that registration of the disputed domain name by the Respondent is not bona fide. Courts in India and abroad, recognize the superior trademark rights through prior use against the statutory rights obtained through registration. The Complainant has established that it has adopted the trademark KHADI (which forms a part of its tradename, corporate name and trading style) in 1956 and the same has been in use continuously till date. The Complainant, through evidence placed on record, has proved that by virtue of its adoption for more than 60 years, and extensive use thereof, the trademark KHADI has become exclusively and globally associated with the Complainant. The Respondent, however, has not proved that it has actually used the mark in commerce prior to the Complainant’s use of the mark in commerce in India. In the facts and circumstances of the present case, the Panel has no difficulty in accepting that the Respondent has nothing to prove its bona fide use of the disputed domain name as it has failed to submit any appropriate and proper response to the contentions made by the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Panel also observes that the Respondent has not submitted any effective rebuttal of the Complainant’s contentions that the primary aim of the Respondent is to disrupt the business of the Complainant as well as take advantage of the goodwill and reputation associated with the Complainants trademarks. The Panel observes that there is virtually no possibility that owing to the well-known nature of the Complainant’s trademark KHADI and the well-established reputation and goodwill associated to it, the Respondent was unaware of the Complainant’s existence or presence in the market. The Panel, in these facts, observes that the mark of the Complainant KHADI is well-known not only in India but also in various parts of the world and there is every likelihood of Internet users of the disputed domain name believing that there is some connection, affiliation or association between the Complainant and the Respondent thereby extracting undue commercial and other gains to the Respondent and further having the effect of damaging the goodwill, reputation and business interests of the Complainant. The Panel agrees with the Complainant’s contention that the Respondent registered the disputed domain name for the sole purpose of designing the website to mislead Internet users and that the Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website at the disputed domain name. The Panel, therefore, finds that the disputed domain name was registered and being used in bad faith by the Respondent. 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 Maninder Singh
Sole Panelist
Date: October 15, 2020
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