The Complainant is Khadi and Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Nanci Nette, 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 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 amended 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.
The Center appointed John Swinson as the sole panelist in this matter on November 8, 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 Respondent provided the Registrar with an address in the United States. Because the Respondent did not file a Response, little is known about the Respondent.
The disputed domain name was registered on June 16, 2017.
At one time, until April 2021, the website at the disputed domain name sold articles of clothing similar to KHADI items sold by the Complainant. At the present time, the website at the disputed domain name appears to host pay-per-click (“PPC”) content related to India, such as to book hotels in India.
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 are prominently featured on boards and hoardings of each store that is authorized to sell products under the KHADI trademark. The Complainant’s KHADI trademark are 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 trademarks KHADI and is therefore identical to the Complainant’s trademark/trade name KHADI.
The Respondent registered the disputed domain name several 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 and pass off his goods/services as that of the Complainant.
Due to the fame and reputation associated with the trademarks 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 use of the KHADI trademark, along with the terms “Bhandar” and “Vapi” 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 Complainant referred to and relied upon several prior UDRP decisions in which the Compliant was successful.
The Complainant has contended that besides the evident mala fide adoption of an identical trademark in the disputed domain name, there are several references to the Complainant and its trademark KHADI in the disputed domain name and website, including use by the Respondent of the “Khadi India” orange oval device and statements in the “About Us” section of the website at the disputed domain name where the Respondent falsely claims to be associated with the Complainant.
The Complainant has not issued any such Khadi Mark certificate in favour of the Respondent.
The Complainant wished to amicably resolve this issue and reached out to the Respondent by way of a legal notice dated February 3, 2021. The fact that the Respondent failed to reply or comply with the terms of the this letter, further goes on to establish the mala fide intentions of the Respondent.
This disputed domain name has not been used in connection with bona fide offering of goods or services by the Respondent. The disputed domain name has instead been used to advertise goods and services in violation of the trademark rights of the Complainant.
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 in bad faith to profit from the reputation of the Complainant. The mere fact that the Respondent registered the disputed domain name comprising of the Complainant’s trademark KHADI entirely, falsely claimed to be associated with the Complainant on its website and used the Complainant’s KHADI INDIA device trademark on the website is a clear indication of the bad faith adoption.
The Respondent had registered the disputed domain name for the sole purpose of using the website to mislead the consumers. By doing so, the Respondent has intentionally attempted to create confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The Respondent registered the disputed domain name in bad faith to profit from the reputation of the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
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 trademark KHADI in its entirety. The only difference is that there is the addition of the words “Bhandar” and “vapi”. This addition of these two words does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s KHADI trademark under the Policy.
The term “Bhandar” when translated into English means “store”. Vapi is a city in India known for its ancient temples.
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”.
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 precedes the registration of the disputed domain name by the Respondent.
Further, the Complainant asserts that the Respondent is making a commercial use of the disputed domain name by selling products that compete with the Complainant’s products. The Complainant asserts that such use is not bona fide, but rather, it is use that misleads consumers into believing that the disputed domain name is associated with the Complainant.
The Complainant also asserts that there is no other meaning associated with the term KHADI other than in relation to the Complainant.
As discussed below, the evidence points to the Respondent using the Complainant’s KHADI trademark to confuse consumers into believing that the Respondent is, or is associated with, the Complainant. This is not bona fide use of the disputed domain name.
Additionally, the Respondent’s use of the confusingly similar disputed domain name to host a parking page with PPC links does not, absent any further explanation, provide the Respondent with rights or legitimate interests in the disputed domain name. Instagram, LLC v. Whois Agent, Domain Protection Services, Inc. / Ahmad Butto,WIPO Case No. D2021-0754.
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 of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.
For the reasons set forth above, the Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain name.
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.
It is clear that the Respondent is aware of the Complainant. The Respondent’s website at one time offered for sale similar products to those of the Complainant and used the Complainant’s logo.
The website at the disputed domain name at one time included the likely false representation in the FAQ section of the website that the Respondent was “the leading manufacturers and suppliers of khadi fabrics in India”.
In the present circumstances, the fact that the disputed domain name resolves to a website which trades off the Complainant’s reputation and attempts to confuse Internet users into believing the Respondent’s website is affiliated with the Complainant leads the Panel to conclude the registration and use of the disputed domain name are in bad faith.
Further, the website at the disputed domain name uses the unique trademarked logo of the Complainant, which is an orange oval that includes the words “Khadi India”. In the present circumstances, use of the Complainant’s logo on the Respondent’s website is strong evidence of bad faith. See, for example, Tatts Group Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2020-2055.
The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy.
Further, after receiving a demand letter from the Complainant’s lawyers, the website at the disputed domain name changed, and now hosts PPC links. Where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the domain name’s association with the Complainant, such use amounts to use in bad faith. See, for example, Mecenat Aktiebolag v. C/O Alpnames Limited / Edouard,WIPO Case No. D2018-1366.
Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain name was 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 18, 2021