The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Sarabjeet Singh, Mycity Events India Corporation, 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 30, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 15, 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 November 18, 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 November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. An informal communication was sent by the Respondent to the Center on November 27, 2021.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on January 4, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant is a statutory body formed in April 1957, established by Government of India, under the Act of Parliament, “Khadi and Village Industries Commission Act of 1956”. The Complainant is an organization established under the Ministry of Micro, Small and Medium Enterprises and its objectives are three fold: firstly, a social objective of providing employment in rural areas; second, economic objective of producing saleable articles; and thirdly, a wider objective of creating self-reliance amongst people and building up a strong rural community spirit. Its head office is in Mumbai with six other zonal offices within India and it also has offices in 28 other states for implementation of its various programs.
Since the very beginning of the formation in 1957, the Complainant has been carrying on work related to implementation of programs for development of Khadi and other Village Industries in the rural areas in coordination with other agencies. The programs offered by the Complainant are to promote products under the Trademark KHADI. The Complainant is using the Trademark KHADI, and got the same registered with the Registry of Trademarks in India. In particular, the Indian trademark registration no. 2851524 for KHADI was registered on September 25, 1956.
The Respondent registered the disputed domain name
The Complainant in its Complaint has, inter alia, raised the following contentions:
The Complainant had registered its Trademark KHADI on September 25, 1956 and it is in use at present as well. By virtue of its adoption nearly six decades back and owing to extensive use thereof, the Trademark KHADI has fetched itself a reputation and global association in the eyes of the consumers. The Complainant authorizes various retail sellers, organizations, societies and institutions to sell products under the KHADI Trademark. In order to be listed as an authorized user of KHADI Trademark for the purposes of sales and promotions of Khadi certified products and services, each organization has to apply for recognition through the Khadi Institutions Registrations and Certification Sewa (KIRCS). The Complainant’s KHADI Trademark is prominently featured on all products sold by the Complainant in India and abroad.
The disputed domain name incorporates the Complainant’s Trademark KHADI, in which the Complainant has statutory as well as common law rights by virtue of long and continuous use and being the registered proprietor thereof in a number of jurisdictions. Hence, the Complainant contends that allowing a third party to use this Trademark KHADI would cause a great deal of confusion and deception amongst the Complainant’s patrons, members of trade, consumers and public at large. The Complainant is of the strong belief that the Respondent had registered the disputed domain name with a view to ride upon the goodwill of the Complainant’s well-known Trademark KHADI and pass off his goods/services as that of the Complainant. Owing to the fame and reputation associated with the Trademark KHADI, the first impression in the minds of the consumers shall be that the Respondent’s website originates from, is associated with, or is sponsored by the Complainant.
The Complainant has also contended that KHADI is a well-known trademark in a number of proceedings filed before the Center. Since, the disputed domain name
The Complainant further contends that the Respondent, with an aim of capitalizing on the well-known nature of the Trademark KHADI has incorporated it in the disputed domain name, so as to maximize the earning potential of the Respondent’s domain name, which typically increases when a domain name exploits a well-known brand value. The Respondent has registered the disputed domain name long time after the adoption of the Trademark KHADI by the Complainant. Furthermore, the Trademark KHADI has not been used by unknown third parties other than the Complainant or its authorized license or franchise holders.
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. Hence, the Respondent has the onus to ensure that the registration of the disputed domain name did not violate the Complainant’s trademark rights. The Complainant submitted that the well-known nature of the Complainant’s Trademark KHADI, has prior statutory registrations and also the well established reputation and goodwill associated to it. Therefore, the Respondent cannot credibly claim to have been unaware of the mark.
The Respondent has failed to establish any demonstrable preparation to use the disputed domain name for legitimate purposes after its registration. Also, as provided under paragraph 4(c) of the Policy, no exemptions provided are applicable to the present circumstances. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s prior Trademark KHADI.
B. RespondentThe Respondent had sent an informal communication to the Center on November 27, 2021 that he has own brands and garments products of Khadi fabric for sale, and that he has registered the disputed domain with the Registrar by making the corresponding payment.
6. Discussion and FindingsIt remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. It provides as follows:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that;
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel will address all the three aspects of the Policy listed above hereunder:
A. Identical or Confusingly SimilarThe Complainant has also furnished evidence of its rights in the Trademark KHADI through details of some of its trademark registrations and common law rights that have accrued to it due to long and substantial use of the trademark not only in India but in certain other parts of the world. The Complainant has filed copies of several registrations in different jurisdictions for the Trademark KHADI, including International Registration No. 1272626 registered on December 2, 2014, and Indian Registration No. 2851524 registered on November 27, 2014.
The Panel has considered and examined all the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for the Trademark KHADI. There is no doubt that the Complainant has rights in the Trademark KHADI.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 provides the view of panelists: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant trademark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing.” Mere addition of suffix “fashion” does not make the Trademark KHADI non-recognizable in the disputed domain name
Mere addition of suffix “fashion” cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Panel finds it useful to refer to WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
The gTLD “.com” is disregarded under the first element confusing similarity test. It is also useful to rely upon Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001 in which it is held that the addition of the gTLD, “.com” to the disputed domain names is irrelevant and immaterial for the purposes of assessing confusing similarity with the Complainant’s trademark. WIPO Overview 3.0, section 1.11.1 states that the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Therefore, the Panel finds that the Complainant has successfully established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe Complaint is based on the Trademark KHADI and its variations registered in favor of the Complainant and, used in connection with goods sold and services offered by the Complainant and its authorized members. The Trademark KHADI in the Indian context and the freedom movement in India refers to hand-spun and hand-woven cloth.
The Respondent is in no way related to the Complainant nor the Respondent is an agent of the Complainant, nor does he in any way or manner carry out activities for or on behalf of the Complainant. On the other hand, the Complainant is obliged and is undertaking all such functions for amelioration/development of the downtrodden masses located in the villages in India. The Trademark KHADI, in the above-mentioned background, indisputably vests in the Complainant as evidenced by various statutory registrations not only in India but in other jurisdictions as well, secured by the Complainant.
The Complainant runs a program under which it authorizes licenses or grants certificates to third parties to use the KHADI Trademark in a prescribed manner. The Respondent has registered the disputed domain name consisting of the Trademark KHADI of the Complainant. The Complainant had been using the trademark for a long time since 1956. The Complainant has not authorized or permitted the Respondent to use the Trademark KHADI.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the Respondent’s rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. WIPO Overview 3.0, section 2.1 “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent had sent an informal communication through email dated November 27, 2021 to the Center reproduced herein under:
“Please Explain what’s the issue and why we are getting this email. We have our own Brands and Garments products of Khadi fabric for sale. We have registered This Domain by the godaddy portal by paying the proposed amount. Thanks.”
The Respondent has failed to file a substantive response or any evidence to rebut the Complainant’s prima facie case or to explain his rights or legitimate interests. The Respondent has thus failed to demonstrate any rights or legitimate interests in the disputed domain name
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
In the absence of the Respondent’s response, and in light of the evidence submitted by the Complainant, the Panel finds that the Complainant has satisfied its burden to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”. The Complainant is required to prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith. Hence, circumstances at the time of registration and thereafter have to be considered by the Panel.
There is virtually no possibility that owing to the well-known nature of the Complainant’s Trademark KHADI and the well-established reputation and goodwill associated with it, the Respondent was unaware of the Complainant’s existence or presence in the market. The Complainant’s Trademark KHADI has been found to be a well-known trademark. The trademark was also a subject matter of a number of UDRP decisions in:
i) Khadi & Village Industries Commission v. Himanshu Kumar Goel, Medisu Health Solutions,WIPO Case No. D2020-2162;
ii) Khadi & Village Industries Commission v. Contact Privacy Inc. Customer 1245389705 / Raghav Somani, Headphone Zone Pvt. Ltd.,WIPO Case No. D2020-2244;
iii) Khadi & Village Industries Commission v. Uttam Rao, Global Media Corp.,WIPO Case No. D2020-2934;
iv) Khadi and Village Industries Commission v. Shubh Malhotra,WIPO Case No. D2021-2555.
In view of the abovementioned factual matrix, the Panel is of the opinion that the mark of the Complainant KHADI is well-known and there is every likelihood of Internet users of the disputed domain name believing that there is some connection, affiliation or association between the Complainant and the Respondent, thereby extracting undue commercial and other gains to the Respondent, and further having the effect of damaging the goodwill, reputation and business interests of the Complainant.
WIPO Overview, section 3.1.1 “If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity.”
The Complainant has produced evidence of registration of the Trademark KHADI in its favor given, inter alia, by the Indian Trademarks Registry. The Respondent has registered the disputed domain name
In view of the above, the Panel concludes that the third and last condition provided for by paragraph 4(a)(iii) of the Policy is met. The Panel therefore finds that the disputed domain name
For the foregoing reasons, in accordance with paragraph s 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Ashwinie Kumar Bansal
Sole Panelist
Date: January 14, 2022