The Complainant is Khadi and Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Shubh Malhotra, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2021, 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 10, 2021 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 August 12, 2021.
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 August 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on September 7, 2021.
The Center appointed Maninder Singh as the sole panelist in this matter on September 16, 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 BackgroundThe Complainant is stated to be a statutory body formed in April 1957 by the Government of India, under the Act of Parliament, “Khadi and Village Industries Commission Act of 1956”. The Complainant is stated to be 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 claims to have adopted the trademark “KHADI” (which forms a part of its trade name, corporate name, and trading style) on September 25, 1956 and the same has been in use continuously till date. The Complainant claims that by virtue of its adoption more than sixty years ago, and extensive use thereof, the trademark “KHADI” has become exclusively and globally associated with the Complainant in the eyes of consumers. The KHADI Trademarks are also registered in various other jurisdictions/regions.
The disputed domain name was registered on May 8, 2020.
5. Parties’ Contentions A. ComplainantThe Complainant in its complaint has, inter-alia, raised the following contentions:
The Complainant organization 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. The Complainant claims to have taken over, in April 1957, the work of former All India Khadi and Village Industries Board. The Complainant claims to play 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 it has six zonal offices. Other than its zonal offices, it has offices in 28 states for the implementation of its various programmes.
The Complainant is stated to have been implementing programs for the development of Khadi and other Village Industries (“KVI”) in the rural areas in coordination with other agencies. The programs offered by the Complainant are to promote products under the trademark KHADI. The Complainant also claims to work for upliftment and improvement of artisans, weavers, and other members of small-scale village and rural industries.
The Complainant claims that it plans, promotes, organizes and implements programs for the development of Khadi and other village industries in rural areas. It also helps in building up reserve of raw materials for supply to producers. It focuses on the creation of common service facilities for processing of raw materials and semi-finished goods. The Complainant has introduced several interest subsidy schemes for artisans, weavers, and other members of small-scale village and rural industries.
The Complainant claims to have owned numerous registrations for the word mark KHADI and KHADI device marks (hereinafter, the KHADI trademarks). The Complainant has annexed a list of the registered KHADI trademarks in India along with copies of the registration certificates as Annexure F. The Complaint’s KHADI trademarks are also registered in various other jurisdictions. The Complainant has annexed copies of the registration certificates as Annexure G.
The Complainant claims to have adopted the trademark “KHADI” (which forms a part of its trade name, corporate name, and trading style) on September 25, 1956 and the same has been in use continuously till date. The Complainant claims that by virtue of its adoption more than sixty 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 is stated to be 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 states 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). A screenshot of the KIRCS page from the Complainant’s website was annexed as Annexure H.
The Complainant claims that there are about seven sales outlets directly owned by the Complainant out of 8050 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 has annexed images of these stores as Annexure I. The Complainant further claims that the Complainant’s KHADI trademarks are prominently featured on all the products sold by the Complainant in India and beyond.
The Complainant claims that the Complainant’s products bearing the KHADI trademarks are sold and showcased through exhibitions in various parts of the world. The Complainant has participated 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 claims to have been 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, competitions, and shows.
The Complainant states that for the purposes of promotion of the KHADI trademarks, the Complainant collaborated 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 claims that the Complainant’s 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. Copies of some of the articles published in various magazines and journals and images were annexed as Annexure N.
The Complainant also claims to operate several social media platforms, such as Facebook, Twitter, YouTube, etc., all of which enjoy a wide followership. Copies of the screenshots from the Complainant’s social media platforms were annexed as Annexure O.
The Complainant also claims to operate 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 claims 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, it claims that the trademark “KHADI” has not been used by anyone other than the Complainant or its authorized license or franchisee holders. It also claims that 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 their 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 it has registration for the device marks “Khadi India” and the device marks comprise of the term “KHADI INDIA”. The Complainant argues that the Respondent’s use of the mark “INDIA KHADI FASHION” in the disputed domain name and its website and social media platforms is a slavish attempt at riding upon the hard earned goodwill and reputation of the Complainant in its aforementioned KHADI INDIA trademarks owing to the continuous and extensive use of the same since several years.
The Complainant further contends that the use of the mark KHADI along with the country name “India” and a generic term “fashion” as the prefix and suffix, 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 and promotes its business related to organizing fashion related events, brand management etc. under the KHADI mark. The registration of such a domain name containing the Complainant’s trademark KHADI does not render the disputed domain name distinguishable from that of the Complainant.
The Complainant relies upon WIPO UDRP decisions in Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd.,WIPO Case No. D2000-0275 holding that the addition of generic terms does not serve to distinguish the domain name from the trademark, but rather, may reinforce the association of the trademark with the disputed domain name.
The Complainant also relies upon decision in MasterCard International Incorporated (“MasterCard”) v. Wavepass asWIPO Case No. D2012-1765 holding that “the Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of the Complainant have been existing for a long time. The Respondent knew or should have known that the Domain Name included Complainant’s MASTERCARD famous trademark.” The Complainant argues that in the present case, the Respondent ought to have been aware of the Complainant’s famous trademark KHADI at the time of registration of the disputed domain name.
The Complainant contends that the generic Top-Level Domain “.com” does not grant the disputed domain name distinctiveness regarding the trademark KHADI. The Complainant relies upon Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001 and on Khadi & Village Industries Commissionv. Uttam Rao, Global Media Corp.,WIPO Case No. D2020-2934 which 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.
The Complainant contends that apart from the evident mala-fide adoption of an identical trademark in the disputed domain name, there are several references to the Complainant’s trademark KHADI in the Respondent’s domain name and website. It also contends that the Respondent’s website promotes Respondent’s events under the name “INDIA KHADI FASHION” wherein they allegedly promote clothing made of “Khadi” textiles. The Complainant further contends that the Respondent has posted a static image comprising of the wordings “INDIA KHADI FASHION – An initiative by Shubh Malhotra” on all the pages of the website hosted on the disputed domain name and apart from misusing the prior registered wordmark KHADI of the Complainant, the Respondent has also adopted a deceptively similar variant of the Complainant’s device mark which is in the background of the image.
The Complainant contends that the Respondent on his website’s “About us” section has mentioned “India Khadi Fashion is a global fashion event, and that it has been devised and created with an aim to symbolize Indian Textile Heritage, making Khadi a Fashionable Movement and curating a new wave in sustainable fashion.” The Complainant states that the Respondent further mentions “The India Khadi Fashion (IKF) will lead the Khadi revolution movement in India through IKF and backing them would be a hardworking and dedicated team of event organizers, content creators, stylists, designers, choreographers, photographers and so on.” The Complainant contends that under the Khadi Mark Regulations, 2013, the Complainant issues a Khadi Mark Certificate to authorized manufacturers of authentic fabric. The Complainant assures that it has not issued any such Khadi mark certificate in favour of the Respondent. Therefore, the Respondent’s alleged claim of “leading a Khadi revolution movement in India” and “making Khadi a Fashionable movement” on the website is false and misleading. The Complainant contends that the Respondent has thus intentionally attempted to mislead the general public into believing that the products and services offered by the Respondent are sourced, sponsored, affiliated or endorsed by the Complainant.
The Complainant contends that the Respondent’s website comprises of various tabs, including the following:.
(i) Upcoming Events – informing about upcoming fashion show event under India Khadi Fashion Week 2021-22, India Khadi Fashion (IKF) Super Model Male/Female for 2021;
(ii) Registration – calling for candidates/participants to register for the above mentioned events and for paying the Registration Fee;
(iii) IKF E-Commerce – launching an e-commerce platform for designers to promote their apparels made of Khadi textile;
(iv) Blogs – wherein several blogs related to fashion, beauty tips etc. are posted by the Respondent all bearing the logo ‘India Khadi Fashion’. One such blog posted by the Respondent is “Khadi Revolution” about the advent of Khadi Textile since the pre independence era, wherein the Respondent has quoted Shri. Chinmay Basu, who has served as the Chief Executive Officer of Khadi and Village Industries Commission, the Complainant herein. This proves that the Respondent despite having prior knowledge about the Complainant, is not only posting unauthorized content on the website bearing the Complainant’s prior registered and well known KHADI trademarks, but also attempting to create an impression that the Respondent is associated with the Complainant.
(v) Web pages – promoting the Respondent’s fashion and lifestyle magazine where the mark ‘India Khadi Fashion’ is featured, providing links to its official social media pages such as Facebook, Instagram and YouTube under the name INDIA KHADI FASHION.
The Complainant contends that this shows the Respondent’s bad faith to misrepresent themselves and their business as that of the Complainant or associated or authorized by them.
The Complainant contends that the Complainant wished to amicably resolve this issue and reached out to the Respondent by way of legal notice dated February 26, 2021. The Complainant further argues that the fact that the Respondent failed to reply or comply with the terms of the said letter, further goes on to establish the mala fide intentions of the Respondent.
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, and that the disputed domain name has instead been used to advertise goods and services in violation of the trademark rights of the Complainant. Complainant mentions that the Respondent has been using the disputed domain name to advertise their products under the mark KHADI, misleading the consumers into believing that the Respondent and disputed domain name is in some manner affiliated to the Complainant by using the term KHADI in conjunction with the generic words “India” and “fashion”.
The Complainant also contends that the Respondent registered the disputed domain name solely for misleading consumers. Since its registration on May 8th, 2020, the Complainant explains, the Respondent has been using the said disputed domain name to promote its fashion events falsely representing themselves as the promoter of Khadi textile. It contends that the wrongful and misleading 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 Complainant further contends that none of the exemptions provided under paragraph 4(c) of the UDRP apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the KHADI trademark. The Complainant has prior rights in the KHADI trademark which precedes the registration of the disputed domain name by the Respondent.
The Complainant submits that it has established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby the burden of proof shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name. The Complainant has referred to and relied upon decision of the Centre in 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).
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.
Contentions regarding bad faith registration and use of the disputed domain name by the Respondent:
The Complainant contends that the Respondent’s use of the mark INDIA KHADI FASHION in the disputed domain name and use of the logo on its website is a violation of the Complainant’s KHADI trademarks including the charkha logo. It further contents that it is evident that the Respondent cannot have any rights or legitimate interest in the disputed domain name, and 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 Complainant contends that the Respondent registered the disputed domain name in bad faith to profit from the reputation of the Complainant. The Complainant contends that the mere fact that the Respondent registered the disputed domain name comprising of the Complainant’s mark KHADI entirely, is a clear indication of the bad faith adoption. It also argues, that using the disputed domain name and associated website to directly infringe the Complainant’s trademarks, create confusion, diverts profits away from the Complainant, and potentially perpetuate fraud against consumers, demonstrates the Respondent’s wholly illegitimate purpose in registered and using the disputed domain name. The Complainant relies upon Centre’s decision in Beachbody, LLC v. Registration Private, Domains by Proxy, LLC/Trang Pham Thi,WIPO Case No. D2019-2123.
The Complainant contends that Respondent had registered the disputed domain name for sole purpose 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. It claims that the obligations imposed by paragraph 2 are an integral part of the Policy applicable to all registrants, that cannot be ignored as was observed by the Panel in City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643.
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 the Complainant’s rights in the well-known trademark KHADI was observed by the Panel in Khadi & Village Industries Commissionv. Contact Privacy Inc. Customer 1245389705 / Raghav Somani, Headphone Zone Pvt. Ltd.,WIPO Case No. D2020-2244, Khadi & Village Industries Commissionv. Himanshu Kumar Goel, Medisu Health Solutions,WIPO Case No. D2020-2162, and Khadi & Village Industries Commission v. Uttam Rao, Global Media Corp.,WIPO Case No. D2020-2934. In the aforementioned decisions, the Panel observed “that the Complainant’s KHADI mark is well-known, not only in India but also in various parts of the world.”
The Complainant has contended that the above instances clearly demonstrate the bad faith of the Respondent and that the disputed domain name has been registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has furnished evidence of its rights in the trademark KHADI through details of some of its trademark registrations and common law rights, which have accrued to it through its long and substantial use of the mark not only in India but in 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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)stating 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 terms “India” and “fashion” to the Complainant’s trademark KHADI shows the mala fides of the Respondent to create an impression in the minds of the consumers that it is connected to the Complainant. In this regard, the Panel relies on the previous UDRP decisions, particularly 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;
wherein it was held that addition of generic terms does not serve to distinguish the domain name from the trademark but rather, would affirm the association of the trademark with the domain name.
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 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.
The Panel observes that the Complainant has made out a case proving its rights in the trademark KHADI. The Complainant also has several registrations for device mark KHADI INDIA. 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 trademark KHADI of the Complainant, worsening the risk of confusion and/or association by adding “India” and “fashion” 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 on 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 masses of citizens 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 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.
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 FaithThe Panel observes that the disputed domain name
The Panel also observes that the disputed domain name was registered in bad faith to profit from the reputation of the Complainant. The mere fact that the disputed domain name comprises the Complainant’s mark KHADI entirely is a clear indication of the bad faith adoption. Using the disputed domain name and associated website to directly infringe the Complainant’s trademarks, create confusion, diverts profits away from the Complainant, and potentially perpetuate fraud against consumers, demonstrates the Respondent’s wholly illegitimate purpose in registered and using the disputed domain name as held in the decision in Beachbody, LLC v. Registration Private, Domains by Proxy, LLC/Trang Pham Thi,WIPO Case No. D2019-2123.
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.
The Panel, in these facts, observes that the Respondent had registered the disputed domain name for the sole purpose of misleading 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 disputed domain name was registered in bad faith to profit from the reputation of the Complainant.
The Panel, therefore, finds that the disputed domain name was registered and being used in bad faith by the Respondent.
7. DecisionFor 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: September 30, 2021