The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Friensys Solutions, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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 October 4, 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 October 5, 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 October 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 9, 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 an Indian government organization under the Ministry of Micro, Small and Medium Enterprises. It is a statutory body created in 1957 under the Khadi and Village Commission Act of 1956. The Complainant promotes products under the KHADI trademark and owns several trademark registrations for the mark and its variants in India and in other jurisdictions, for example, Indian Trademark KHADI no. 2851528, registered on November 27, 2014, designating goods and services in international class 5.
The Respondent registered the disputed domain name on August 31, 2020. The disputed domain name resolves to an ecommerce website that promotes products for haircare, skin care, and body care. The products displayed on the Respondent’s website are labeled with the KHADI mark. In the “contact us” page of the website, the Respondent has provided a contact address, phone number, fax number, and an email address. At present however, the website content seems to have been taken down.
5. Parties’ Contentions A. ComplainantThe Complainant states that it plays a vital role in the Indian economy and its overarching purpose is premised on socio-economic benefit for rural industry. The Complainant’s threefold objectives are:
(i) social objective of providing employment in rural areas; (ii) economic objective of producing saleable articles; and (iii) wider objective of creating self-reliance among people and to build a strong rural community spirit. The Complainant states it provides large scale employment to rural people, particularly for weaker sections and rural women, and its efforts generates employment in about 248,000 villages in India.
The Complainant states its programs for the development of Khadi and other Village Industries in rural areas are done in coordination with other agencies. Its offices are located in 28 states with six zonal offices. The Complainant implements the “Prime Minister’s Employment Generation Programs” for upliftment of artisans, weavers and small-scale village and rural industries. The Complainant states it programs help rural industries in building-up reserves of raw materials, creating common service facilities for processing raw materials and finished goods and also has interest subsidy plans for artisans, weavers, and rural industries.
The Complainant asserts that its mark has acquired goodwill, fame, and reputation due to its extensive promotion through exhibitions, trade-fairs, competitions, and shows. It has collaborated with leading brands such as LAKME, TITAN, and RAYMOND to promote the mark. During the Lakme Fashion Week, 14th edition and the Sustainable Fashion Day at Lakme Fashion Week on August 23, 2018, collections of four designers were displayed under the KHADI mark. The Complainant has filed evidence of promotion of the mark through print and electronic media and also evidence of its large following on social media platforms. The Complainant’s mobile phone application called “Khadi India” helps users locate the nearest Khadi Store.
The Complainant states that it certifies and authorizes retail sellers, organizations, societies, and institutions to sell products under the KHADI trademarks, through the Khadi Institutions Registration & Certification Sewa (KIRCS). While the Complainant owns only seven sales outlets, it has over eight thousand outlets that sell KHADI licensed products. The Complainant adds that it has used the mark since 1956 and “Khadi” is part of its trade name, corporate name, and trading style. Therefore, use of the KHADI mark, by an unauthorized party, may lead to confusion and deception among its patrons, members of trade, consumers, and the public.
The Complainant mentions that a notice was sent on June 18, 2021, to the postal address and the email address on the Respondent’s website, to which there was no response. The Complainant then filed the present Complaint and requests for the transfer of the disputed domain name on the grounds that it is identical or confusing similar to a trademark in which it has rights, the Respondent lacks rights or legitimate interests in the disputed domain name, and the disputed domain name has been registered and is being used in bad faith by the Respondent.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Policy under paragraph 4(a), requires the Complainant to establish three elements to obtain the remedy of transfer of the disputed domain name, these are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
The three requirements that need to be met by the Complainant under paragraph 4 (a) of the Policy, are discussed here sequentially:
A. Identical or Confusingly SimilarThis section focuses on the rights of the Complainant. As the Complainant has alleged violation of its mark due to its inclusion in the disputed domain name, the first element requires the Complainant to establish rights in the said mark. The Complainant also needs to fulfil another requirement under this element, and that is, the disputed domain name is either identical or confusingly similar to the trademark or service mark in which it has rights.
The Complainant has provided evidence of its trademark registrations to establish its rights in the KHADI mark. Such evidence includes copies of its Indian and international trademark registration certificates. The Complainant has also relied on its common law rights in the mark and has provided evidence of extensive use and promotion of the KHADI marks through the media, through exhibitions, evidence of shows organized by the Complainant to promote its mark. The Complainant has submitted evidence of third-party recognition of its mark. Based on all the evidence, it is found that the Complainant has established its rights in the KHADI mark.
The disputed domain name contains the KHADI mark preceded by the term or word “vanshi”. Addition of other terms along with a trademark do not prevent a finding of confusing similarity under the first element, regardless of whether the terms are descriptive or not. See section 1.8 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0). The Panel finds that the prominent part of the disputed domain name is the KHADI mark. The additional term “vanshi” with the mark does not prevent a finding of confusingly similar of the domain name to the mark. The disputed domain name is therefore found to be confusingly similar to the Complainant’s KHADI mark.
The Complainant has successfully met the requirements under the first element of paragraph 4(a) of the Policy and established that the disputed domain name is confusingly similar to the KHADI trademark in which it has rights.
B. Rights or Legitimate InterestsThis section focuses on the Respondent’s rights or the lack of it. Under the second element of paragraph 4(a) of the Policy, the Complainant is required to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name. It is sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name. When a complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production under this element shifts to the respondent to show any rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with relevant submissions and evidence, or in the absence of a response from the respondent, the complainant is deemed to have satisfied the second element. See section 2.1WIPO Overview 3.0.
The Complainant has argued that the Respondent lacks rights or legitimate interests in the disputed domain name and has submitted that: (i) the Respondent does not use the disputed domain name in connection with a bona fide offering of products but seeks to derive mileage from the KHADI mark, without any authorization for its use; (ii) the Respondent’s website claims that the Respondent manufactures products under the “Vanshi Khadi” brand, but the products listed are merely aggregated from other third-party manufacturers; (iii) the Respondent’s use of the KHADI mark to promote and display products is misleading use of the mark and does not constitute legitimate use, and therefore the question of being known by the disputed domain name does not arise under the circumstances the Complainant argues. In view of these arguments, the Complainant alleges that the provisions under paragraph 4 (c) of the Policy are not applicable to the disputed domain name.
The Complainant has further submitted that it grants authorized users certification for selling goods or services under the KHADI trademark, which is premised on the Complainant’s policy and role to encourage small manufacturers. The Complainant states that the Respondent has not obtained such authorization or certification to use the KHADI mark.
The Panel finds from the evidence, that the disputed domain name has been used by the Respondent for promoting products using the KHADI mark, but without authorization from the Complainant to be a licensed user of the mark. There is significant use of the mark on the products displayed on the Respondent’s website. Under the circumstances discussed, such unauthorized use of the KHADI mark by the Respondent amounts to use with an intention to derive mileage from the mark.
The Respondent did not file a Response to the Complaint or take part in these proceedings. In the absence of a response, there is no material on record regarding the Respondent’s business or any reasons or justification given by the Respondent for the use of mark on its products or for the use of a confusingly similar variant of the KHADI mark in the disputed domain name. The Panel notes that the Complainant has not granted the Respondent any license or authorization to use the KHADI mark or register domain names containing the mark.
The Respondent is obviously making commercial use of the mark, as the website is being used for of promoting products for commercial purposes. The reasonable inference that can be drawn from the discussed circumstances, is that the Respondent has registered and used the disputed domain name to derive commercial benefit from use of the mark, that is owned and promoted by the Complainant. Unauthorized use of the mark in the disputed domain name does not support a finding that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel accordingly finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The second requirement under paragraph 4 (a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThis section focuses on analyzing whether the registration and use of the disputed domain name has been made in bad faith or not. The third element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent. Bad faith is generally found when the preponderance of facts and circumstances of the case, indicate that a respondent has targeted a complainant’s mark with a view to derive unfair advantage from use of the mark. See section 3.1, WIPO Overview 3.0.
The Complainant has submitted the following arguments with supporting evidence that the Respondent has registered and used the disputed domain name in bad faith: (i) the Complainant has prior rights and holds several valid registrations for the KHADI mark, which precede the registration of the disputed domain name; (ii) the Respondent has not only used its mark in the disputed domain name and has also displayed another variant of the KHADI mark on each page of the website, which is a static image of a device mark with the words “Vanshi Khadi” posted on each webpage; (iii) the Respondent’s website displays products that are labelled only with the KHADI mark, and the Complainant argues that the use of its KHADI mark in this manner establishes bad faith on the part of the Respondent with the intention to misrepresent the Respondent’s business as being associated with the Complainant’s to derive wrongful gains. The Complainant has further added that the Respondent’s failure to respond to the cease and desist notice amounts to “adoptive admissions of the allegations”.
The Panel finds the use of the Complainant’s mark by the Respondent is unauthorized and the use is in a manner that seeks to derive commercial gains. The Complainant has established that due to its prior adoption and use of the mark and its extensive promotion of the KHADI mark, the mark has acquired considerable reputation. The Panel also finds that the Respondent has used the KHADI mark extensively on many products displayed on the website. The Respondent has also mentioned the price of each of these products. The use of the KHADI mark on the products displayed on the Respondent’s website suggests that the Respondent ought to have constructive knowledge of the mark and the Complainant’s rights in the mark. The evidence filed by the Complainant shows that the disputed domain name and the website are being used in connection with a business for commercial purposes.
As the Respondent is not authorized to use the mark, it is reasonable to infer that the Respondent seeks to derive advantage based on the reputation associated with the KHADI mark, which amounts to unfair use of the mark by the Respondent. The use of a domain name that is a confusingly similar variant of a widely known mark by an unaffiliated entity, can by itself create a presumption of bad faith. See section 3.1.4 of WIPO Overview 3.0. In view of the circumstances discussed and based on the preponderance of facts and material placed before the Panel, the reasonable conclusion is that, the Respondent has knowingly used the mark in the disputed domain name.
The preponderance of facts and circumstances of the case show that the disputed domain name was registered with an intention to attract Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The registration and use of the disputed domain name in this manner by the Respondent, is understood to be bad faith within the meaning of paragraph 4(b)(iv) of the Policy, as it intentionally seeks to attract Internet users by creating a likelihood of confusion with the intention of deriving mileage from the unauthorized use of another’s trademark. In the light of all that has been discussed, the registration and use of the disputed domain name is found to be in bad faith under the Policy.
The Panel accordingly finds that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy, that the disputed domain name has been registered and used in bad faith. The Panel finds the Complainant has proved the three elements required under the Policy.
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,
Harini Narayanswamy
Sole Panelist
Date: November 23, 2021