The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Uttam Rao, Global Media Corp, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 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 December 6, 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 an amended Complaint on December 7, 2020. The Center verified that the Complaint together with the amended 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 December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021. The Center appointed Maninder Singh as the sole panelist in this matter on January 20, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a 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) since September 25, 1956 and the same has been in use continuously until 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. According to the WhoIs, the disputed domain name was registeredon October 8, 2017, and it resolves to a parked webpage with no content except for a phrase that reads: “This domain khaditourism.com is parked at UTTAM RAO”. 5. Parties’ Contentions A. Complainant The Complainant 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 programmes. 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 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 until 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 4 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 Respondent registered this disputed domain name several years after the adoption of the trademark KHADI by 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. Apart from the evident mala fide adoption of the identical trademark in the disputed domain name, the Respondent has not posted any content. The website has a static text that reads “This domain khaditourism.com is parked at UTTAM RAO”. 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 Complainant’s mark KHADI with a generic term “tourism” clearly shows the mala fide of the Respondent to create an impression in the minds of the consumers that it is connected to the Complainant and offers tourism related services. 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 relies upon the UDRP decisions in: (i) Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; holding that the addition of generic 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)”. Contentions regarding the Respondent having no rights or legitimate interests in the disputed domain name: The Complainant contends that the Respondent has merely parked the disputed domain name and has not hosted any content on the website. There is no demonstrable preparation to use or actually use the domain name in connection with any bona fide offering of goods or services. The Complainant relies upon various UDRP decisions in: (i) Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; holding that there was no bona fide use of the registered domain names by the Respondent for offering goods or services and the Respondent had merely parked the same to bank on the reputation of the Complainant. Such parking on the domain name resulted in the transfer of the same to the Complainant by all the Panels. The Complainant contends that the Respondent has not used the disputed domain name since its registration on October 8, 2017. The Respondent appears to be squatting on the disputed domain name, with no operational website. The Complainant also contends that the Respondent registered the disputed domain name for commercial gain to try and get the Complainant to purchase the said domain name for substantial fees. 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 proof 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: (i) Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; 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 Complainants trademark/ trade name / trading style KHADI. The Respondent cannot have any rights or legitimate interest in the disputed domain name. The primary aim of the Respondent is to sell or transfer the disputed domain name to the Complainant for valuable consideration. The Complainant submits that prior to initiating the UDRP proceedings the Complainant had also filed an INDRP (.IN Domain Name Dispute Resolution) complaint against the Respondent’s domain name Thereafter, the Respondent contacted the Complainant and offered to sell the disputed domain name for a sum of USD 1,200. The Complainant contends that this demonstrates that the Respondent is determined in some way or another to use the domain names to extract some commercial advantage from the Complainant. The Complainant, in this regard, relies upon decision in Bayerische Motoren Werke AG v. James Vergis, Stressfree Driving School Pty Ltd.,WIPO Case No. D2017-0071. Complainant has contended that the Respondent registered the disputed domain name for the sole purpose of squatting on the same. The Complainant contends that the evidence supports the conclusion that the Respondent registered the disputed domain name in bad faith. The fame and unique qualities of the trademark KHADI, which was adopted and applied for by the Complainant well prior to the registration of the disputed domain name, make it extremely unlikely that the Respondent created the disputed domain name independently without any knowledge of the Complainant’s trademark. Even constructive knowledge of a famous trademark like KHADI is sufficient to establish registration in bad faith. The Complaint in this regard refers to and relies upon the following decisions (i) Fannie May Confections, Inc. v. Domain Contact 2 (FANNIEMAYS-COM.DOM),WIPO Case No. D2006-0813 holding that a similar registration of a domain name by the respondent several years after the adoption of the complainant’s trademark has to be with the motive to profit from the goodwill that the complainant has built in its mark and was subsequently transferred to 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 has contended that the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has furnished evidence of its rights in the trademark KHADI through details of some of its trademark registrations and common law rights have accrued to it through its long and substantial use of the mark not only in India but 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 trademark KHADI. The Panel also finds it useful to refer to the decision in the case of Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. 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 term “tourism” to the Complainant’s trademark KHADI does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Panel also agrees with the Complainant’s contention that the gTLD “.com” is not relevant regarding the confusing similarity of the disputed domain name with the trademark KHADI. Attention of the Panel, in this regard, has been drawn to 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.” 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 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 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 Complainant), 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 Complaint, 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 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 “tourism” 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 or development of the downtrodden masses located in the villages in India. The mark KHADI, in the The Panel finds merit in the Complainant’s contention that the Respondent has merely parked the disputed domain name and has not hosted any content on the website. There is no demonstrable preparation to use or actually use the domain name in connection with any bona fide offering of goods or services. The attention of the Panel has been drawn to the following UDRP decisions: (i) Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No. D2017-0363; holding that there was no bona fide use of the registered domain names by the respondent for offering goods or services and the respondent had merely parked the same to bank on the reputation of the complainant. The Panel observed that the Respondent has not used the disputed domain name since its registration on October 8, 2017 and that the disputed domain name is not an operational website. The Panel agrees with the Complainant’s contention that the Respondent registered the disputed domain name for commercial gain to try and get the Complainant to purchase the disputed domain name for substantial fees. The Panel finds merit in the Complainant’s claim that the Complainant has established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and now the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. The Respondent has not submitted any such evidence. The attention of the Panel in this regard has been drawn to Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). In the facts and circumstances of the present case, the Panel has no difficulty in accepting that the Respondent has not proved any bona fide use of the disputed domain name as he 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, in these facts, observes that the Complainant’s KHADI mark 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 of the Respondent believing that there is some connection, affiliation or association between the Complainant and the Respondent thereby extracting undue gains to the Respondent and further having the effect of damaging the goodwill, reputation and business interests of the Complainant. The Respondent cannot have any rights or legitimate interests in the disputed domain name. The Panel also observes that the Respondent has not submitted any rebuttal of the Complainant’s contentions that the primary aim of the Respondent is to sell or transfer the disputed domain name to the Complainant for valuable consideration. The Complainant has proved by placing evidence on record that prior to initiating the UDRP proceedings, in an INDRP (.IN Domain Name Dispute Resolution) complaint in connection with Respondent’s domain name The Panel, thus, observes that the Respondent uses domain names to extract some commercial advantage. The attention of the panel has been drawn to the decision in Bayerische Motoren Werke AG V. James Vergis, Stressfree Driving School Pty Ltd.,WIPO Case No. D2017-0071. The Panel finds merit in Complainant’s contention that the Respondent registered the disputed domain name for the sole purpose of squatting on the same. The Panel also agrees with Complainant’s submission that the fame and unique qualities of the trademark KHADI, which was adopted and applied for by the Complainant well prior to the registration of the disputed domain name, make it extremely unlikely that the Respondent created the disputed domain name independently without any knowledge of the Complainant’s trademark and that, noting that the Respondent is located in India, even constructive knowledge of the trademark KHADI would be sufficient to establish registration in bad faith. The Panel has observed the following decisions referred to and relied upon by the Complaint in this regard: (i) Fannie May Confections, Inc. v. Domain Contact 2 (FANNIEMAYS-COM.DOM), WIPO Case No. D2006-0813; The Panel observes that there is virtually no possibility that the Respondent was unaware of the Complainant’s trademark, its existence or presence in the market. In this regard, the Panel refers to and relies upon the previous UDRP decision in Consitex S.A. Lanificio Ermenegildo Zegna & Figli S.p.A. Ermenegildo Zegna Corporation v. Mr. Lian Ming,WIPO Case No. DWS2003-0001 – holding that a respondent could not ignore the existence of a well-known trademark at the time of registering a domain name. Noting the abovementioned circumstances of this case, the use of the disputed domain name to resolve to a parking page, along with its offer for sale the disputed domain name to the Complainant, lead to a conclusion of registration and use of the disputed domain name in bad faith. The Panel, therefore, finds that the disputed domain name was registered and is 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
(ii) Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275
(ii) Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404;
(iii) Express Scripts. Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
(ii) Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
(ii) Carla Sozzani Editore S.R.L. v. Michael D. Darr,WIPO Case No. D2017-1237
- The Economic Objective – Providing saleable articles;
- The Wider Objective – Creating self-reliance amongst people and building up a strong rural community spirit.
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.
(ii) Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404;
(iii) Express Scripts. Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267,
(ii) Carla Sozzani Editore S.R.L. v. Michael D. Darr,WIPO Case No. D2017-1237.
Sole Panelist
Date: February 5, 2021
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