The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Sachin Patil, MI Khadi, 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 August 6, 2021, 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 confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on August 25, 2021 inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 26, 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, paragraph s 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2021.
The Center appointed Dr. Ashwinie Kumar Bansal as the sole panelist in this matter on October 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 BackgroundThe Complainant is a statutory body formed in April 1957, established by an Act of Parliament, “Khadi and Village Industries Commission Act of 1956”. The Complainant is the organization established under the Ministry of Micro, Small and Medium Enterprises and its objectives are three fold: firstly, a social objective of providing employment in rural areas; second,economic objective of producing saleable articles; and thirdly, a wider objective of creating self-reliance amongst people and building up a strong rural community spirit. Its head office is in Mumbai with six other zonal offices within India and it also has offices in 28 other states for implementation of its various programs.
Since the very beginning of the formation in the year 1957, the Complainant has been carrying on work related to implementation of programs for development of Khadi and other Village Industries 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 is using the Trademark KHADI and also got the same registered with the Registry of Trademarks in India.
The Complainant provides evidence of 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 Respondent has registered the disputed domain name
The Complainant in its Complaint has, inter alia, raised the following contentions:
The Complainant had registered its Trademark KHADI on September 25, 1956 and it is in use at present as well. By virtue of its adoption nearly six decades back and owing to extensive use thereof, the Trademark KHADI has fetched itself a reputation and global association in the eyes of the consumers. The Complainant 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 KHADI Trademarks for the purposes of sales and promotions of Khadi certified products and services, each organization has to apply for recognition through the Khadi Institutions Registrations and Certification Sewa (KIRCS). The Complainant’s KHADI Trademarks are prominently featured on all products sold by the Complainant in India and abroad.
The disputed domain name incorporates the Complainant’s Trademark KHADI, in which the Complainant has statutory as well as common law rights by virtue of long and continuous use and being the registered proprietor thereof in a number of jurisdictions. Hence, the Complainant contends that allowing a third party to use this Trademark KHADI would cause a great deal of confusion and deception amongst the Complainant’s patrons, members of trade, consumers and public at large. The Respondent had registered the disputed domain name with a view to ride upon the goodwill of the Complainant’s well-known Trademark KHADI and pass off his goods/services as that of the Complainant. Owing 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 has also contended that KHADI is a well-known Trademark in a number of proceedings filed before the Center. Since, the disputed domain name
A mere addition of words “mi” to the Complainant’s Trademark KHADI is a clear depiction of mala fide intention on part of the Respondent which seems to be done with an ulterior intention of creating an impression in the minds of the consumers that it is associated with the Complainant. On some occasions the Respondent on social media has even referred to themselves as “MIKHADI” i.e. My India Khadi. The Complainant has relied on Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0775 with such a similar issue in which it was held that a mere addition of generic Top-level domain (“gTLD”) term does not serve to distinguish the Trademark rather it reinforces the association of the Trademark to the domain name.
Another argument presented by the Complainant is that of the Respondent’s device mark being similar to that of the Complainant’s. The Respondent on his landing page has posted a static image which comprises of a device of chakra which is visually similar to the Complainant’s device mark. The images also comprise of the words “Nature’s product” by MIKHADI Kutir Fashion Pvt. Ltd. on the pages. Also, no material content, physical address or a store address is mentioned on the website, which simply goes to indicate that the Respondent has simply registered the disputed domain name to block registration by another person and prima facie has no legitimate or bona fide interest in the disputed domain name.
The Respondent has failed to establish any demonstrable preparation to use the disputed domain name for legitimate purposes after its registration. Also, as provided under paragraph 4(c) of the UDRP, no exemptions provided are applicable to the present circumstances. 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.
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. Hence, the Respondent has the onus to ensure that the registration of disputed domain name did not violate the Complainant’s Trademark rights. Therefore, the Complainant concluded that the well-known nature of the Complainant’s Trademark KHADI, has prior statutory registrations and also the well established reputation and goodwill associated to it, therefore, Respondent cannot credibly claim to have been unaware of the mark.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAs per paragraph 5(e) of the Rules, where a respondent does not submit a substantive response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the Complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a substantive response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences there from as it considers appropriate.
It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. It provides as follows:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel will address all the three aspects of the Policy listed above hereunder:
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 have accrued to it due to long and substantial use of the Trademark not only in India but in certain other parts of the world.
The Panel has considered and examined all the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for the Trademark KHADI. There is no doubt that the Complainant has rights in the Trademark KHADI.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 provides the view of panelists: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant trademark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing.” Mere addition of prefix “mi” does not make the Trademark KHADI non-recognizable in the disputed domain name
Mere addition of such a prefix “mi” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s Trademark. The Panel finds it useful to refer to WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
The gTLD “.com” is disregarded under the first element confusing similarity test. It is also useful to rely upon Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001 in which it is held that the addition of the gTLD, “.com” to the disputed domain names is irrelevant and immaterial for the purposes of assessing confusing similarity with the complainant’s trademark. WIPO Overview 3.0, section 1.11.1 states that the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Therefore, the Panel finds that the Complainant has successfully established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe Complainant is based on the Trademark KHADI and its variations registered in favor of the Complainant and, used in connection with goods sold and services offered by the Complainant and its authorized members. The Trademark KHADI in the Indian context and the freedom movement in India refers to hand-spun and hand-woven cloth.
The Respondent is in no way related to the Complainant nor the Respondent is an agent of the Complainant, nor does he in any way or manner carry out activities for or on behalf of 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 Trademark KHADI, in the above-mentioned background, indisputably vests in the Complainant as evidenced by various statutory registrations not only in India but in other jurisdictions as well, secured by the Complainant.
The Complainant runs a program under which it authorizes licenses or grants certificates to third parties to use the KHADI Trademarks in a prescribed manner. The Respondent has registered the disputed domain name consisting of the Trademark KHADI of the Complainant. The Complainant had been using the Trademark for a long time since 1956. The Complainant has not authorized or permitted the Respondent to use the Trademark KHADI.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the Respondent’s rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. WIPO Overview 3.0, section 2.1 “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has failed to file a response to rebut the Complainant’s prima facie case or to explain his rights or legitimate interests. The Respondent has thus failed to demonstrate any rights or legitimate interests in the disputed domain name
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
In the absence of the Respondent’s response, and in light of the evidence submitted by the Complainant, the Panel finds that the Complainant has satisfied its burden to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”. The Complainant is required to prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith. Hence, circumstances at the time of registration and thereafter have to be considered by the Panel.
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. Complainant’s Trademark KHADI has been found to be a well-known Trademark. The Trademark was also a subject matter of a number of UDRP decisions in:
i. Khadi & Village Industries Commission v. Himanshu Kumar Goel, Medisu Health Solutions,WIPO Case No. D2020-2162;
ii. Khadi & Village Industries Commission v. Contact Privacy Inc. Customer 1245389705 / Raghav Somani, Headphone Zone Pvt. Ltd.,WIPO Case No. D2020-2244;
iii. Khadi & Village Industries Commission v. Uttam Rao, Global Media Corp.,WIPO Case No. D2020-2934.
In lieu of the abovementioned factual matrix the Panel is of the view that the mark of the Complainant KHADI is well known 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.
WIPO Overview, section 3.1.1 “If on the other hand circumstances indicate that the Respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity.”
The Complainant has produced evidence of registration of the Trademark KHADI in its favor given, inter alia, by the Indian Trademarks Registry. The Respondent has registered the disputed domain name
In view of the above, the Panel concludes that the third and last condition provided for by paragraph 4(a)(iii) of the Policy is met. The Panel therefore finds that the disputed domain name
For the foregoing reasons, in accordance with paragraph s 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Ashwinie Kumar Bansal
Sole Panelist
Date: November 3, 2021