The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Michael F Mann, Domain Asset Holdings, LLC, United States of America (“United States”), represented by Leventhal, Senter and Lerman, PLLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On September 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 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 a communication on October 4, 2021 to the Complainant regarding the Mutual jurisdiction section and disclosing some additional registrant information received from the Registrar. The Complainant filed an amended Complaint on October 4, 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was initially November 1, 2021 and extended to November 5, 2021 pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on November 5, 2021.
The Center appointed John Swinson as the sole panelist in this matter on November 12, 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 established by an Indian Act of Parliament, namely “Khadi and Village Industries Commission Act of 1956”. Its head office is located in Mumbai, Maharashtra, India. The Complainant provides large scale employment to rural people, including those belonging to scheduled castes, and scheduled tribes and rural women in India.
The Complainant owns registered trademarks for KHADI in India and in other countries. These registrations include International Registration No. 1272626 registered on December 2, 2014, and Indian Registration No. 2851524 registered on November 27, 2014, with a claimed first use date of September 25, 1956 (hereinafter referred as “the KHADI trademark”). The Complainant also owns registered trademarks for a logo that includes the words “Khadi India” in an orange oval with a red circle above those words. See Indian Registration No. 3863679 filed June 19, 2018, (hereinafter referred as “the KHADI INDIA logo trademark”).
The Respondent is a domain name trader.
The disputed domain name was registered on May 17, 2015. At the time of filing the Complaint, the disputed domain name was offered for sale for USD 294,888.
At the present time, the website at the disputed domain name is branded as “Domain Market” and states that the disputed domain name is for sale for USD 194,888.
Both the Complainant and the Respondent have been parties in many prior decisions under the Policy.
5. Parties’ Contentions A. ComplainantIn summary, the Complainant makes the following submissions:
The Complainant was 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, in April 1957, took 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 248,000 villages in India. Its head office is in Mumbai, and its six zonal offices are in Delhi, Bhopal, Bangalore, Kolkata, Mumbai, and Guwahati. Besides and in addition to its zonal offices, it has offices in 28 states in India for the implementation of its various programs.
The Complainant owns numerous registrations and applications for the word mark KHADI and device marks. The Complainant has annexed a list of registered KHADI trademark 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 being the owner of the mark KHADI authorizes various retail sellers, organizations, societies, and institutions to sell products under the KHADI trademark. In order to be listed as an authorized user of the KHADI trademark 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).
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 trademark. The KHADI trademark is prominently featured on boards and hoardings of each store that is authorized to sell products under the KHADI trademark. The Complainant’s KHADI trademark is prominently featured on all the products sold by the Complainant in India and beyond.
The Complainant’s products bearing the KHADI trademark 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 trademark and to encourage artisans, spinners, and weavers of India. Further, the Complainant has always remained actively involved in the community service in its efforts to further promote its products and services under the KHADI trademark including sponsorship and organization of various events, competition and shows.
For the purposes of promotion of the KHADI trademark, the Complainant has been undertaking various initiatives including collaboration with the 14th edition of the Lakme Fashion Week, in which collections were made by four designer labels under the KHADI trademark 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’s products sold under the KHADI trademark 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 operates 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 disputed domain name wholly contains the Complainant’s KHADI trademark and the dominant feature of the KHADI logo trademark, and is therefore identical to the Complainant’s KHADI trademark.
Due to the fame and reputation associated with the KHADI trademark, 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 use of the KHADI trademark, along with geographical term “India” clearly shows the mala fides of the Respondent to create an impression in the minds of the consumers that it is connected to the Complainant. The registration of a domain name containing the Complainant’s trademark KHADI does not render the disputed domain name distinguishable from that of the Complainant.
The addition of geographical terms does not serve to distinguish or to prevent confusing similarity between the disputed domain name and the KHADI trademark.
The Complainant referred to and relied upon several prior UDRP decisions in which the Complainant was successful.
None of the exemptions provided under paragraph 4(c) of the Policy apply in the present circumstances. The Complainant has not authorized, licensed or permitted the Respondent to register or use the disputed domain name. The Complainant has prior rights in the KHADI trademark, which precedes the registration of the disputed domain name by the Respondent.
The Complainant 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 production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Respondent registered the disputed domain name thereby misappropriating illegally and without authority the KHADI trademark, which is the exclusive property of the Complainant. The disputed domain name is parked since its registration and the Respondent has failed to make any bona fide use of the disputed domain name until date.
It is obvious that it is the fame of the KHADI trademark that has motivated the Respondent to register the disputed domain name.
The Respondent registered the disputed domain name 60 years after the adoption of the trademarks KHADI by the Complainant. Furthermore, the KHADI trademark has not been used by anyone other than the Complainant or its authorized license or franchise holders. The Respondent is not a licensee or franchisee of the Complainant and has adopted the identical trademark with a view to ride upon the goodwill associated with the Complainant’s well-known KHADI trademark.
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 primary aim of the Respondent is to sell or transfer the disputed domain name to the Complainant or any third party, for valuable consideration. The fact that the Respondent has failed to host any content of the disputed domain name or use it for any bona fide offering of goods/services demonstrates that the Respondent has registered the disputed domain name in bad faith and with the mala fide intention to extract some commercial advantage from the Complainant.
It is clear that the Respondent registered the disputed domain name for the sole purpose of squatting on the same and evidently to resell it on premium for profits.
The fame and unique qualities of the KHADI trademark, 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.
The Respondent has been held in a large number of cases to be a cyber squatter.
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.
B. RespondentThe Response was filed with the Center on November 5, 2021.
In summary, the Respondent makes the following submissions:
The Respondent concedes that the portion of the disputed domain name that precedes the top-level domain designation is identical to the trademark in which the Complainant alleges that it has trademark rights. The Respondent takes no position as to the validity or enforceability of such rights or as to whether the Complainant has protectable rights in such trademark in the context of this proceeding.
Because the Respondent is using the disputed domain name in connection with a landing page to offer the disputed domain name for sale, the Respondent has a right and legitimate interest in the disputed domain name.
The Respondent is in the business of buying and selling domain names comprised of descriptive, geographic and generic terms, common phrases, and combinations thereof. The Respondent sells over 1,000 domain names per year. The disputed domain name resolves to a landing page that displays the sale price of the domain name, a means to purchase it, a phone number for DomainMarket, a search engine for browsing the premium domain names available for purchase on DomainMarket.com, links to information about the Respondent and DomainMarket.com, and other marketing material about domain names.
The Respondent’s use of the disputed domain name in connection with its business of reselling premium domain names is a bona fide offering of goods or services and has an accepted place in the domain name industry.
Prior panels have consistently found that registering domain names for the purpose of offering them for sale to third parties is not inherently objectionable and is capable of comprising a bona fide offering of goods and services.
While the mere registration of such a domain name will not generally give rise to rights or legitimate interests in the name, the offer of the disputed domain name for sale in accordance with the Respondent’s general business activities does give rise to a legitimate interest in this case.
The Respondent (who is based in the United States) acquired the disputed domain name well before the Complainant filed its first trademark application in the United States believing the term “Khadi” to be a generic term for a garment worn in India without any knowledge of the Complainant or the government of India’s efforts to convert the generic term into a protected mark. At no time did the landing page used by the Respondent reference the Complainant or any of its competitors, nor did the Respondent ever attempt to sell the disputed domain name to the Complainant or any of its competitors.
The Respondent registered the disputed domain name in good faith because of its belief that the disputed domain name (being comprised of a generic term for a common item of clothing and the geographic designation for where such garments are worn) had significant potential resale value for a variety of potential legal uses.
The Complainant bears the burden of proof in demonstrating that the Respondent registered and uses the disputed domain name in bad faith. As stated above, the Respondent was not aware of the Complainant’s alleged rights in KHADI at the time the Respondent registered the disputed domain name, nor was the disputed domain name registered with an intent to profit from or otherwise abuse the Complainant’s trademark rights.
The Respondent did register the disputed domain name in order to sell it to a third party, but it did so in the ordinary course of its legitimate business in good faith and without any knowledge of the Complainant’s existence.
The Complainant offers no proof that its trademark was actually famous in the United States at the time the Respondent registered the disputed domain name (which again, was long before the Complainant first filed a trademark application in the United States).
Not only is there ample evidence of the Respondent’s legitimate rights and good faith motivations as explained above, but it is the Complainant’s burden to establish that the Respondent registered and/or used the disputed domain name in bad faith. Even if the Complainant has offered enough to establish a rebuttable presumption, the legal and factual arguments set forth herein are more than sufficient to rebut that presumption.
The mere offering of a domain name for sale does not establish that it was registered for the purpose of targeting the Complainant or its competitors. UDRP panelists have on the whole required actual knowledge of a complainant’s rights; constructive notice is not enough.
The Complainant’s citation to a handful of adverse UDRP decisions do not establish a “pattern” of bad faith registrations for purposes of Policy, paragraph 4(b)(ii), and should be given limited or no weight in the Panel’s analysis. The fact that the Respondent was unsuccessful in some prior UDRP decisions should be considered in light of the Respondent’s portfolio of over 350,000 domain names. These relatively few instances out of 350,000 where a UDRP panel ruled in favor of a complainant hardly establish a pattern of bad faith conduct. Rather, the small number of them do just the opposite and establish that the Respondent conducts a legitimate business.
The Respondent is well within its rights in the context of its legitimate reputable business to have registered the disputed domain name in an effort to sell it to someone interested in using it for the myriad lawful purposes for which it is suitable. And no reasonable person arriving at the Respondent’s landing page offering the disputed domain name for sale would believe the page has any association with the Complainant. Unless a complainant can provide specific proof that a domain name was not acquired because of its generic or descriptive nature as part of a respondent’s bona fide business, there is no bad faith.
In cases where a respondent makes a plausible claim of descriptive use, the dispositive question is not necessarily limited to whether the respondent was aware of the complainant’s trademark rights, although such knowledge may be a relevant consideration. The larger question is whether, in light of the totality of facts and circumstances of a given case, it has been demonstrated that the respondent’s real aim was to exploit and profit from another’s trademark.
Offering a domain name for sale with a high asking price does not in and of itself compel a conclusion that the Respondent was attempting to trade on the goodwill associated with the Complainant’s trademark. The Complainant’s claim regarding the implication of the Respondent’s current list price for the disputed domain name is also incorrect. An offered price cannot in and of itself be used to establish bad faith.
There simply is no indicia of bad faith in this case. The decisions cited in the amended Complaint primarily involve respondents either clearly attempting to monetize traffic based on pay-per-click and other advertising using a complainant’s mark or directly selling officially licensed goods without authorization. Neither are the case here.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Snowflake, Inc. v. Ezra Silverman,WIPO Case No. DIO 2020-0007.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly SimilarThe first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As stated above in Section 4, the Complainant owns registered trademarks for KHADI.
The disputed domain name includes the Complainant’s KHADI trademark in its entirety. The only difference is that there is the addition of the word “India”. This addition of this word does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s KHADI trademark under the Policy.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc.,WIPO Case No. D2017-0371.
The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s KHADI trademark, disregarding the generic Top-Level Domain (“gTLD”) “.com”.
For similar reasons, the disputed domain name is confusingly similar to the Complainant’s KHADI INDIA logo trademark.
The Respondent “concedes that the portion of the Disputed Domain Name that precedes the top level domain designation is identical to the mark in which Complainant alleges that it has trademark rights”. The Respondent also states that he takes no position as to the validity or enforceability of such rights or as to whether Complainant actually has protectable rights in such trademark in the context of this proceeding. The Panel notes that the Complainant has active registered trademarks in KHADI, and in the KHADI INDIA logo, and as such, these are sufficient to satisfy the standing requirement under the first element of the Policy.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant asserts that the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name.
The Complainant has prior rights in the KHADI trademark, which precede the registration of the disputed domain name by the Respondent.
The Complainant also asserts that the Respondent has created a website to sell the disputed domain name, which is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Complainant also asserts that the fame of the KHADI trademark motivated the Respondent to registered the disputed domain name.
The Panel considers that, based upon the above, the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Respondent asserts that the Respondent has rights or legitimate interests in the disputed domain name.
The Respondent is a domain name trader. The Panel accepts that a bulk domain name trading or reseller business is not per se illegitimate.
The Respondent states that the Respondent registered the disputed domain name believing the term “khadi” to be a generic term for a garment worn in India and without any knowledge of the Complainant. Further, to demonstrate this, the Respondent states that at no time did the landing page used by the Respondent reference the Complainant or any of its competitors, nor did the Respondent ever attempt to sell the disputed domain name to the Complainant or any of its competitors.
The Respondent relies upon prior decisions for the proposition that registering domain names for the purpose of offering them for sale to third parties is not inherently objectionable and is capable of comprising a bona fide offering of goods and services. For example, in relation to the second element of the Policy, the Response quotes UNIKS APP, S.L. v. Privacydotlink Customer 588010 / Blue Nova Inc.,WIPO Case No. D2016-0534, as follows:
“Carrying on business in registering descriptive or generic domain names is not of itself objectionable... There may be circumstances where a registrant (or a purchaser) of a domain name which is a generic word or an acronym has knowledge of the rights of the trademark owner in a way which could raise issues as to the good faith or otherwise of the registrant. In order to establish the applicability of such circumstances it is incumbent upon a complainant to explain to a UDRP panel, with appropriate supporting evidence, why it is that a registrant should be considered to have actual knowledge of the complainant and/or the complainant’s rights (or deemed knowledge if that is the complainant’s case).”
However, that quoted passage is in respect of the third element of the Policy, not the second element. In that case, the Panel made no finding in respect of the second element. Moreover, that case involved a domain name that was registered before the date that the Complainant could establish trademark rights. The reference in the quoted passage to a complainant providing supporting evidence was a reference to providing supporting evidence that the Complainant’s trademark rights arose prior to the registration of the disputed domain name. The decision is of little relevance in the present situation.
The Respondent accepts the consensus view among UDRP panels that the mere registration a domain name will not generally give rise to rights or legitimate interests in the domain name. Normally, where a Respondent is relying upon use to establish rights or legitimate interests, the disputed domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied upon meanings – and not, for example, to trade off third party rights in such word or phrase. So what use does the Respondent have here? The Respondent’s answer is that the Respondent has offered the disputed domain name for sale.
The Respondent relies upon the long-standing decision of Allocation Network GmbH v. Steve Gregory,WIPO Case No. D2000-0016, for the proposition that the Respondent’s practice of buying and selling domain names which “contain or are composed of common words or short phrases from the English language or misspellings of such words” may constitute “use of the domain name in connection with a bona fide offering of goods or services (i.e., the sale of the domain name).” This case concerned the domain name
“The difficulty lies in the fact that the domain name allocation.com, although descriptive or generic in relation to certain services or goods, may be a valid trademark for others. This difficulty is expounded by the fact that, while ‘[a]llocation’ may be considered a common word in English speaking countries, this may not be the case in other countries, such as Germany.
Therefore, although the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights.”
The Gregory case is not authority for the proposition that offering a domain name for sale as such constitutes a legitimate interest. Not surprisingly, the outcome in the Gregory case depended on the particular facts in that case – the disputed domain name was a dictionary term and the Respondent had no knowledge of the Complainant nor should the Respondent had reason to know of the Complainant’s German trademark.
In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights (see section 2.10 of WIPO Overview 3.0).
In the present case, the Respondent has not used the disputed domain name in connection with the relied-upon dictionary meaning.
A further problem with the Respondent’s case is that the Respondent has not provided any evidence that “khadi” is a dictionary term. The Respondent asserts that “khadi” is “a generic term for a common item of clothing worn in India and the geographic designation for where such garments are worn.” The Respondent could have provided extracts from leading dictionaries, but did not. The Respondent could have provided evidence of common and unlicensed use of the term “khadi”, but did not. In contrast, the Compliant provided significant evidence that KHADI is in fact a trademarked term in a number of jurisdictions in relation to items of clothing from India, that the Complainant has common law rights dating back more than 60 years, and that the Complainant has been successful in a number of cases under the Policy that did not consider KHADI to be a dictionary term.
The Respondent has not been able to bring itself within any of the safe-harbours of paragraph 4(c) of the Policy.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The Respondent registered the disputed domain name asserting that “khadi” was a dictionary term (or as the Respondent says in a declaration, was “a generic term”).
The Respondent registered the disputed domain name as a reference to “a common item of clothing worn in India and the geographic designation for where such garments are worn.” This, in fact, is a reference to the Complainant’s products. In short, the evidence before the Panel is that the Respondent registered the disputed domain name because of the value of “khadi” as a source identifier of certain type of products (in this case, the Complainant’s products).
This is not a case where the Respondent registered a term such as “orange” because an orange is a fruit, not knowing that ORANGE is the trademark of a telecommunications company. Here, it is more analogous to the Respondent registering “Rolls-Royce” under the mistaken assumption that this was a “generic term” for a quality automobile, perhaps somehow not realizing that ROLLS-ROYCE was a trademarked automobile brand.
The Respondent also admits that the Respondent registered the disputed domain name “in order to sell it to a third party, but it did so in the ordinary course of its legitimate business in good faith and without any knowledge of Complainant’s existence.” The Respondent claims not to have known of the identity of the Complainant, but did know that KHADI referred to items of clothing from India, i.e., the Complainant’s products.
It is undisputed between the Parties that the Respondent has no Intellectual Property (“IP”)-related rights in the designation “khadi”, but that the Respondent is aiming to sell the disputed domain name to any interested third party. Therefore, the Respondent obviously acquired the disputed domain name not for use in connection with its relied-upon meaning (whether as a dictionary or geographical phrase), but for the purpose of selling it.
The Complainant has no registered trademarks in the United States where the Respondent is located. The Complainant filed a trademark application in the United States in February 2021, after the Respondent registered the disputed domain name, and that application is pending at the date of this decision. The Panel also recognizes that the Respondent has a portfolio of about 350,000 domain names many of which may be dictionary terms. Against this background, it must be found that the Respondent is at least systematically accepting that the Respondent’s buying and selling of domain names could be infringing upon third parties’ trademark rights. In this context, the Respondent is arguing that because it is based in the United States where, at the time of registration of the disputed domain name, the Complainant had no registered trademark right, and because the Respondent had no actual knowledge of the Complainant’s registered trademark rights outside of the United States, that the Respondent was acting in good faith. Such line of argument is not convincing to the Panel insofar as the Respondent is not trading domain names under the country code Top-Level Domain (“ccTLD”) “.us”, but that its business obviously is built upon trading the usually much more valuable domain names under the global (and globally-accessible) gTLD “.com”. Doing so certainly broadens the Respondent’s duty to look outside of the United States borders to find out about possible third parties’ conflicting trademark rights. If the Respondent had done so, and the obvious place to look first was India (because “India” was part of the disputed domain name), the Respondent would have easily discovered at least one of the Complainant’s many trademark registrations in India. However, the Respondent provided no evidence as to what due diligence it actually did prior to registering the disputed domain name. Buying and selling domain names under the gTLD “.com” is a business that is per se not restricted to any country.
The Respondent asserts that the disputed domain name “had significant potential resale value for a variety of potential legal uses.” However, the Respondent did not identify such uses. Moreover, while it is not the Panel’s position to ascertain the value of the disputed domain name and while the Panel certainly accepts that domain names comprised of dictionary terms can sell for significant sums (albeit more typically comprised of one word not two as here), it is noteworthy that it was offered for sale for almost USD 300,000 which narrows the universe of prospective purchasers from those that would seek a domain name at a retail registrar for “ordinary” pricing to those with serious capital to invest; ultimately, the Panel considers it more likely than not that the Respondent’s intentions would have been to find a buyer such as the Complainant (or possibly a competitor) who would value the name for its relation to the related trademark.
The Complainant meets paragraph 4(b)(i) of the Policy.
This dispute raises an interesting issue, as to whether there is a “pattern of conduct” by the Respondent where only a small percentage of the domain names registered by the Respondent have previously found to have been registered and used in bad faith. The Panel does not need to decide this question to reach a conclusion that the Respondent registered and used the disputed domain name in bad faith.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
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
John Swinson
Sole Panelist
Date: November 26, 2021