The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Dalveer Singh, Param Systems, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2021. On October 1, 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 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 Maninder Singh as the sole panelist in this matter on November 14, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant is stated to be a statutory body formed in April 1957 by the Government of India, under the Act of Parliament, Khadi and Village Industries Commission Act of 1956. The Complainant is engaged in the promotion and development of the KHADI brand and the products under the KHADI trademark through the institutions certified by the Complainant. The Complainant claims to have adopted the trademark KHADI (which forms a part of its trade name, corporate name, and trading style) since 1956, and the same has been in use continuously till date. The Indian trademark registration no. 2851542 for KHADI in International Class 24 was registered on November 27, 2021. The Complainant claims that by virtue of its adoption more than sixty years ago, and extensive use thereof, the trademark “KHADI” has become exclusively and globally associated with the Complainant in the eyes of consumers. The KHADI trademark isalso registered in various other jurisdictions/regions.
The Respondent has registered the disputed domain name on December, 15, 2018.
5. Parties’ Contentions A. ComplainantThe Complainant organization is stated to have been established under the Ministry of Micro, Small and Medium Enterprises (“MSME”), Government of India with objectives to provide employment in rural areas, producing saleable articles and creating self-reliance amongst people. The Complainant claims to have taken over, in April 1957, the work of former All India Khadi and Village Industries Board. The Complainant claims to play an important role in Indian economy with generation of employment in about 2.48 lakh villages in India. Its head office is in Mumbai, India, and it has six zonal offices. Other than its zonal offices, it has offices in 28 Indian States for the implementation of its various programmes.
The Complainant is stated to have been implementing programs for the development of Khadi and other Village Industries (“KVI”) in the rural areas in coordination with other agencies. The programs offered by the Complainant are to promote products under the trademark KHADI. The Complainant also claims to work for upliftment and improvement of artisans, weavers, and other members of small-scale village and rural industries.
The Complainant plans, promotes, organizes, and implements programs for the development of Khadi and other village industries in rural areas. It also helps in building up reserve of raw materials for supply to producers. It focuses on the creation of common service facilities for processing of raw materials and semi-finished goods. The Complainant has introduced several interest subsidy schemes for artisans, weavers, and other members of small-scale village and rural industries.
The Complainant claims to have owned numerous registrations for the word mark KHADI and device marks (hereinafter, the KHADI trademarks). The Complainant has annexed a list of the registered KHADI trademarks in India along with copies of the registration certificates as Annexure F. The Complaint’s KHADI Trademarks are also registered in various other jurisdictions/regions. The Complainant has annexed copies of these registration certificates as Annexure G.
The Complainant claims to have adopted the trademark “KHADI (which forms a part of its trade name, corporate name, and trading style) on 25th September 1956 and the same has been in use continuously till date. Complainant claims that by virtue of its adoption more than sixty years ago, and the extensive use thereof, the trademark “KHADI has become exclusively and globally associated with the Complainant in the eyes of consumers.
The Complainant is stated to be engaged in the promotion and development of the KHADI brand, and the products under the KHADI trademark through the institutions certified by the Complainant.
The Complainant states that it authorizes various retail sellers, organizations, societies and institutions to sell products under the KHADI trademarks. In order to be listed as an authorized user of the KHADI trademarks for purpose of sales and promotions of KHADI certified products and services, each organization has to apply for recognition through the Khadi Institutions Registration & Certification Sewa (KIRCS). A screenshot of the KIRCS page from the Complainant’s website is annexed as Annexure H.
The Complainant claims that there are about 7 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 trademarks. The KHADI trademarks are prominently featured on boards and hoardings of each store that is authorized to sell products under the KHADI trademarks. The Complainant has annexed images of these stores as Annexure I. The Complainant further claims that the Complainant’s KHADI trademarks are prominently featured on all the products sold by the Complainant in India and beyond.
The Complainant claims that the Complainant’s products bearing the KHADI trademarks are sold and showcased through exhibitions in various parts of the world. The Complainant has participated in several exhibitions and fairs to promote products and services under the KHADI trademarks and to encourage artisans, spinners, and weavers of India. Further, the Complainant claims to have been actively involved in the community service in its efforts to further promote its products and services under the KHADI trademarks including sponsorship and organization of various events, competition and shows.
The Complainant states that for the purposes of promotion of the KHADI trademarks, the Complainant collaborated with the 14th edition of the Lakme Fashion Week, in which collections were made by four designer labels under the trademark “KHADI” and the same were exhibited during a designated Sustainable Fashion Day at Lakme Fashion Week on August 23, 2018. Further, the Complainant has also partnered with brands such as Raymond and Titan to promote the products under the trademark Khadi in the Indian and global markets.
The Complainant claims that the Complainant’s products under the KHADI trademarks have been widely promoted through print and electronic media, including television programs, advertisements, articles, write-ups appearing in leading newspapers, magazines, journals, shopping festivals, exhibitions, etc. Copies of some of the articles published in various magazines and journals and images have been annexed as Annexure N.
The Complainant also claims to operate several social media platforms, such as Facebook, Twitter, YouTube, etc. all of which enjoy a wide followership. Copies of the screenshots from the Complainant’s social media platforms are annexed as Annexure O.
The Complainant also claims to operate a mobile application by the name of “Khadi India” to help customers, patrons and members of trade in locating the nearest Khadi India Store.
The Complainant claims that by virtue of such continuous and exclusive use since at least 1956, as well as the promotion of the KHADI trademarks by the Complainant, general public and members of trade recognize and associate the goods and services under the KHADI trademarks with the Complainant and none other. The Complainant’s KHADI trademarks, and its products thereunder have continued to gather a lot of media attention and have been covered by renowned media houses/newspapers.
The Complainant claims that it has undertaken a robust enforcement program in order to protect its right and to address the misuse/unauthorised use of their trademark KHADI and has taken actions against third parties.
Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant
The Complainant contends that the disputed domain name wholly contains the Complainant’s trademark KHADI and is therefore identical to the Complainant’s trademark/trade name KHADI.
The Complainant contends that the Respondent registered the disputed domain name several years after the adoption of the trademark KHADI by the Complainant.
The Complainant further contends that the trademark “KHADI has not been used by anyone other than the Complainant or its authorized license or franchisee 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 trademark “KHADI and pass off their goods/services as that of the Complainant.
The Complainant also contends that due to the fame and reputation associated with the trademark KHADI, the first impression in the minds of the consumers shall be that the Respondent’s website originates from, is associated with, or is sponsored by the Complainant.
The Complainant contends that the use of the Complainant’s mark KHADI with the word “asmi” clearly shows the mala fide 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 trademarks KHADI does not render the disputed domain name distinguishable from that of the Complainant. The Complainant relied upon following UDRP decisions: Patanjali Ayurved Ltd. v. M/S. Sr. associate, Sukh Patanjali / SR Associate, S R Associate,WIPO Case No. D2018-2448; and Discover Financial Services v. 杨智超 (Zhichao Yang),WIPO Case No. D2020-2818.
Furthermore, the Complainant contends that the generic Top-Level Domain (gTLD) “.com” does not grant the disputed domain name distinctiveness regarding the trademark KHADI. The Complainant relied upon the following UDRP decisions: Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001; KVIC v. Uttam Rao, Global Media Corp.,WIPO Case No. D2020-2934; Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541.
The Complainant contends that there are the following references to the Complainant and its trademark KHADI in the disputed domain name and website:
(i) The Respondent uses the logo “Asmi Khadi” as a static image on its website, which completely subsumes the Complainant’s trademark KHADI.
(ii) In the ‘About Us’ section of the website, the Respondent claims to be allegedly associated with the Haryana Gram Udyog Unit, and further claims to be dealing in various clothing items allegedly made of ‘Khadi’ fabric.
Finally, the Complainant contends that under the Khadi Mark Regulations, 2013, the Complainant issued a Khadi Mark Certificate to authorized manufacturers of authentic KHADI fabric. The Complainant has not issued such Khadi Mark certificate in favour of the Respondent. Therefore, the Respondent’s alleged claim of being associated by the Complainant and selling authentic ‘Khadi’ products is false and misleading. The Complainant contends that the Respondent has attempted to mislead the general public into believing that the products offered by the Respondent are sourced, sponsored, affiliated or endorsed by the Complainant.
Contentions regarding the Respondent having no rights or legitimate interests in the disputed domain name
The Complainant contends that the disputed domain name has not been used in connection with a bona fide offering of goods or services by the Respondent. The disputed domain name has been used to advertise goods and services in violation of the trademark rights of the Complainant. The Respondent has been using the disputed domain name to advertise their products under the mark KHADI and is misleading consumers into believing that it is in some manner affiliated to theComplainant by using the term “Khadi” in conjunction with the word “Asmi”.
The Complainant also contends that the Respondent registered the disputed domain name solely for misleadingconsumers. Since its registration on December 15, 2018, the Respondent has failed to use the disputed domain name for any legitimate purposes. Further, the wrongful and misleading advertisements and the products appearing on the Respondent’s website demonstrates the Respondent’s intention of commercial use of the website to have unlawful gains. Thus, the question of being known by the disputed domain name does not arise in the first place.
The Complainant further contends that none of the exemptions provided under paragraph 4(c) of the Policyapply in the present circumstances. TheComplainant has not authorised, licensed, or permitted the Respondent to registeror use the disputed domain name. The Complainant hasprior rights in the KHADI trademarks, which precedes the registration of thedisputed domain name by the Respondent.
The Complainant submits that it has established a prima facie case that the Respondenthas no rights and legitimate interests in the disputed domain name, and thereby theburden of proof shifts to the Respondent to produce evidence demonstrating rightsor legitimate interests in respect of the disputed domain name. The Complainant has referred to and relied upon the following UDRP decisions: Do The Hustle, LLC v Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant contends that the Respondent on its website has also claimed that they “started with aim of creating the best in class 100% handmade and eco-friendly fabrics created by various Khadi units located in India.”, which is clearly a malicious attempt to mislead the consumers into believing that the Respondent is associated with the Complainant, which is not the case. The Respondent’s actions clearly show its mala fide intention in attempting to attract, for commercial gains, Internet users to its website by creating a likelihood of confusion with the Complainant’s prior registered mark KHADI as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products on the Respondent’s website.
Contentions regarding bad faith registration and use of the disputed domain name by the Respondent
The Complainant contends that the primary aim of the Respondent is to disrupt the business of the Complainant as well as to take advantage of the goodwill and reputation associated with the Complainant’s KHADI trademarks.
The Complainant further contends that 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 to mislead the consumers into thinking that the Respondent is associated with the Complainant on the website is a clear indication of the bad faith registration.
The Complainant further contends that the Respondent by using the disputed domain name and associated website to directly infringe the Complainant’s trademarks, creates confusion, diverts profits away from the Complainant, and potentially perpetuates fraud against consumers, which demonstrates the Respondent’s wholly illegitimate purpose in registering and using the disputed domain name. The Complainant relied upon the following UDRP decisions: Beachbody, LLC v. Registration Private, Domains by Proxy, LLC / Trang Pham Thi,WIPO Case No. D2019-2123; and Khadi & Village Industries Commission v. Contact Privacy Inc. Customer 1245389705 / Raghav Somani, Headphone Zone Private Limited,WIPO Case No. D2020-2244.
The Complainant submits that paragraph 2 of the Policy implicitly requires a registrant to make some good faith efforts 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, and cannot be ignored as was observed by the Panel in the UDRP case City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643. Hence, the Respondent had an onus to ensure that the registration of the disputed domain name did not violate the Complainant’s trademark rights.
The Complainant has contended that the above instances clearly demonstrate the bad faith of the Respondent and that the disputed domain name has been registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. There was a legal notice sent by the Complainant on June 18, 2021. In response to the said legal, on June 24, 2021, the Respondent claimed that it is associated with the Complainant and is authorized by the Khadi & Village Industries Board to run a Khadi Unit in Gurgaon.
The Respondent has referred to and has placed reliance on a copy of the Letter of Appreciation and Certificate regarding Completion of Online Entrepreneurship Development Program under the Prime Minister’s Employment Generation Programme Scheme (Ministry of Micro, Small and Medium Enterprises, Government of India) purportedly issued in favour of one Ms. Kirti Singh.
The Respondent, however, has failed to furnish any official/ legally valid document establishing affiliation with and/or authorisation from the Complainant.
6. Discussion and Findings A. Identical or Confusingly SimilarThe first element requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has furnished evidence of its rights in the trademark KHADI through details of some of its trademark registrations and common law rights that have accrued through its long and substantial use of the mark not only in India but also in other parts of the world.
The Panel has considered that the Complainant has been using and has various registrations for the KHADI trademarks. There does not appear to be any doubt that the Complainant is the owner of trademark KHADI.
The Panel observes that the Complainant’s rights in the well-known trademark KHADI have been recognized by UDRP panels in Khadi & Village Industries Commission v. Raghav Somani, Headphone Zone Pvt. Ltd.,WIPO Case No. D2020-2244; Khadi & Village Industries Commission v. Himanshu Kumar Goel, Medisu Health Solutions,WIPO Case No. D2020-2162; and Khadi & Village Industries Commission v. Uttam Rao, Global Media Corp.,WIPO Case No. D2020-2934.
The Panel finds merit in the contention of the Complainant that addition of the word “Asmi” to the Complainant’s trademark KHADI shows the mala fide intention of the Respondent to create an impression in the minds of the consumers that it is connected to the Complainant.
The Panel finds that the main part of the disputed domain name is the KHADI mark. Although the word “Asmi” has been added to the mark KHADI, the trademark is clearly recognizable in the disputed domain name. The addition of the word “Asmi” does not prevent a finding of confusing similarity between the disputed domain name and the mark.
The Panel also agrees with the Complainant’s contention that the gTLD “.com” does not avoid a finding of confusing similarity with the trademark KHADI. Attention of the Panel, in this regard, has been drawn to Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001, holding that “the addition of the generic Top-Level Domain (‘gTLD’) ‘.com’ to the disputed domain names is irrelevant and immaterial for purposes of assessing confusing similarity with the Complainant’s trademarks”.
The Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe second element of the para 4(a) of the Policy requires the Complainant to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel observes that the Complainant has made out a case proving its rights in the trademark KHADI. The Complainant enjoys goodwill and reputation for the marks registered by it. The Panel has no doubt that the disputed domain name incorporates the well-known and famous trademark KHADI of the Complainant by adding word “Asmi” to it. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to cash on/ride over the name, goodwill and reputation of the Complainant.
The Panel finds that the reliance of the Respondent on a participation certificate in some training programme issued in the name of one Ms. Kirti Singh does not and cannot be taken as any valid authorization by the complainant in favour of the Respondent for registering the disputed domain name.
Further, the Panel agrees with the applicability of the decision relied upon by the Complainant in Khadi and Village Industries Commission v. Ankit Nayyar, Shri Siddhivinayak Provital LLP,WIPO Case No. D2021-2138. The Panel has also taken note of the fact that the Complainant has also filed opposition before the Indian Trademarks Office against the Respondent’s trademark application for the mark “Asmi Khadi”.
The Panel observes that the Respondent is in no way related to the Complainant or its business activities. The Respondent is not an agent of the Complainant, nor does he carry out activities for the Complainant. On the other hand, the Complainant is obliged and is undertaking all such functions for amelioration or development of the downtrodden masses located in the villages in India. The mark KHADI, in the above-mentioned background, indisputably vests in the Complainant as evidenced by various statutory registrations not only in India but other jurisdictions as well, secured by the Complainant.
The Panel finds merit in the Complainant’s claim that the Complainant has established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and now the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. The Respondent has not submitted any such evidence. The attention of the Panel in this regard has been drawn to Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
In the facts and circumstances of the present case, the Panel has no difficulty in accepting that the Respondent has not proved any bona fide use of the disputed domain name as he has failed to submit any convincing response to the contentions made by the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithUnder the third element, the Complainant is required to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Panel observes that the disputed domain name is confusingly similar to the Complainant’s trademark KHADI. The Respondent’s use of the mark KHADI in the disputed domain name and use of the logo on its website is a violation of the Complainant’s KHADI trademarks. The Panel observes that the Respondent cannot have any rights or legitimate interest in the disputed domain name. The Panel also observes that the Respondent has not submitted any rebuttal of the Complainant’s contentions that the primary aim of the Respondent is to disrupt the business of the Complainant as well as take advantage of the goodwill and reputation associated with the Complainant’s trademarks.
The Panel also observes that 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 mark KHADI entirely is a clear indication of the bad faith adoption.
The Panel finds it useful to refer to and rely upon the following UDRP decisions:
(i) Khadi & Village Industries Commission v. Om Soft Solution,WIPO Case No. D2021-1373, wherein the Panel, recognizing the complainant’s rights in the trademark KHADI, observed that the registration and use of the domain name by the respondent is in bad faith and is a systematic attempt to derive unfair advantage, wrongful commercial gains, and to mislead the public.
(ii) Khadi & Village Industries Commission v. Srinivas Balasani,WIPO Case No. D2021-1374, wherein the Panel, observed that the registration and use of the domain name by the respondent is in bad faith and is done for purposes of deriving mileage from the complainant’s rights in the trademark KHADI.
The Panel observes that there is virtually no possibility that the Respondent was unaware of the Complainant’s KHADI trademarks, or of its existence or presence in the market. In this regard, the Panel refers to and relies upon the previous UDRP decision in Consitex S.A. Lanificio Ermenegildo Zegna & Figli S.p.A. Ermenegildo Zegna Corporation v. Mr. Lian Ming,WIPO Case No. DWS2003-0001.
The Panel, in these facts, observes that the Respondent had registered the disputed domain name for the sole purpose of misleading the consumers. By doing so, the Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Respondent registered the disputed domain name in bad faith to profit from the reputation of the Complainant.
The Panel, therefore, finds that the disputed domain name was registered and is being used in bad faith by the Respondent.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Maninder Singh
Sole Panelist
Date: November 28, 2021