The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Geet Sethi, Pinnacle Web Solutions India, India; and SS Khadi, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2021. On December 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant “Geet Sethi, Pinnacle Web Solutions India” 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 December 5, 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 December 7, 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 December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Respondent Geet Sethi, Pinnacle Web Solutions India sent several emails to the Center between December 6, 2021 and January 17, 2022. On January 16, 2022, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 24, 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.
The Respondent Geet Sethi, Pinnacle Web Solutions India in email communications to the Center indicated that the disputed domain name was registered on behalf of a client SS Khadi. The Panel sought clarification regarding the relationship between the registrant on record, Geet Sethi, Pinnacle Web Solutions India, and his client SS Khadi through a Procedural Order dated February 21, 2022. The Procedural Order also invited SS Khadi to send its comments on the Complaint and allowed the Complainant to comment on the submissions that may be received from the Respondent and/or his client SS Khadi. The Respondent Geet Sethi, Pinnacle Web Solutions India sent a reply to the Procedural Order on February 22, 2022. SS Khadi and the Complainant did not reply or respond to the Procedural Order. Due to an apparent issue with the notification of the Procedural Order, on March 21, 2022, SS Khadi was requested to confirm again whether it would like to submit any comment on the Complaint. SS Khadi did not reply to this email.
4. Factual BackgroundThe Complainant is an Indian government organization under the Ministry of Micro, Small and Medium Enterprises. It is an entity created by an Indian statute, the Khadi and Village Commission Act of 1956. The Complainant promotes products under the KHADI trademark and owns several trademark registrations for the mark and its variants in India (such as trademark no. 2851528 registered on November 27, 2014) and in other jurisdictions.
The Respondent Geet Sethi is the director of Pinnacle Web Solutions India that provides website development and related services. The Respondent Geet Sethi, Pinnacle Web Solutions India registered the disputed domain name on May 7, 2020 allegedly on behalf of his client SS Khadi. The disputed domain name resolves to a website that presently does not show any content. However, prior to receiving the Complainant’s legal notice, the website promoted products (such as masks, fabrics, sanitizers) under the name of SS Khadi. The website at “www.sskhadi.com/vcard/” currently shows the company information of SS Khadi.
5. Parties’ Contentions A. ComplainantThe Complainant states that it plays a vital role in the Indian economy and its overarching purpose is premised on socio-economic benefit for rural industry. The Complainant’s threefold objectives are:
(i) Social objective of providing employment in rural areas;
(ii) Economic objective of producing saleable articles; and
(iii) Wider objective of creating self-reliance among people and to build a strong rural community spirit.
The Complainant states it provides large scale employment to rural people, particularly for weaker sections and rural women, and its efforts generate employment in about 248,000 villages in India. The Complainant states its programs for the development of Khadi and other Village Industries in rural areas are done in coordination with other agencies. The Complainant implements the “Prime Minister’s Employment Generation Programs” for upliftment of artisans, weavers, and small-scale village and rural industries. The Complainant alleges that its programs help rural industries in building-up reserves of raw materials, creating common service facilities for processing raw materials and finished goods and also provides subsidy to artisans, weavers and rural industries.
The Complainant asserts that its mark has acquired goodwill, fame, and reputation due to extensive promotion through exhibitions, trade-fairs, competitions and shows. The Complainant has filed evidence of extensive promotion of its mark through print and electronic media, and of its collaboration with leading brands such as Lakme, Titan, and Raymond. The Complainant has also provided evidence of its large following on social media platforms. The Complainant states its mobile phone application is called “Khadi India”, that helps users locate the nearest Khadi Store.
The Complainant states that it certifies retail sellers, organizations, societies, and institution to sell products under the KHADI trademark, through the Khadi Institutions Registration & Certification Sewa (KIRCS). The Complainant contends that it owns only seven sales outlets, but it has over 8,000 outlets that sell KHADI licensed products. The Complainant adds that it has used the mark since 1956 and “Khadi” is part of its trade name, corporate name and trading style. Therefore, the use of the KHADI mark, by an unauthorized party, may lead to confusion and deception among its patrons, consumers and the public.
The Complainant states a notice was sent with a follow up to the Respondent, and there was no response to both notices. The Complainant requests for the transfer of the disputed domain name on the grounds that the disputed domain name is identical or confusing similar to a trademark in which it has rights, the Respondent lacks rights or legitimate interests in the disputed domain name, and the disputed domain name has been registered and is being used in bad faith by the Respondent.
B. RespondentThe Respondent Geet Sethi, Pinnacle Web Solutions India did not submit a formal Response but sent several email communications to the Center. The Respondent Geet Sethi states that his company’s website development services include registration of domain names on behalf of his clients. He further states that the disputed domain name was purchased from a website called “Hosting Raja.in” and that the rights in the disputed domain name have been transferred to his client, namely Tilak Tiwari of SS Khadi. He states that the control of the disputed domain name was given by replacing his email address with his client’s email address and mobile phone number. As evidence, he has filed screenshots of chats with the support center of the “Hosting Raja.in” website. He also states that he has communicated with ICANN and has requested ICANN to update their database, and has provided the reference number of the communication with ICANN.
In another email to the Center, dated February 22, 2022, the Respondent Geet Sethi, Pinnacle Web Solutions India sent a reply to the Panel’s Procedural Order. He in that email reiterates that although the disputed domain name continues to be in his name and his company’s name, the rights to operate it were transferred from his email to the SS Khadi’s email on December 6, 2021.
The Respondent Geet Sethi, Pinnacle Web Solutions India alleges that he is not the correct party to the present Complaint, and the real owner of the disputed domain name is his client SS Khadi, who has administrative control over the disputed domain name. He further adds that he has provided the email contact details of the alleged real owner who controls the disputed domain name and the present dispute should be pursued with the real owner of the disputed domain name, Tilak Tiwari of SS Khadi.
6. Discussion and Findings 6.1. Preliminary Issue - Respondent IdentityThe Respondent Geet Sethi, Pinnacle Web Solutions India denies ownership and control of the disputed domain name and claims to have taken steps to transfer the disputed domain name to his client and alleges that he is not the correct party to the present dispute. To address the issue of the identity of the Respondent in these proceedings, the Panel refers to the Rules, paragraph 1, which defines the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated”. Therefore, under the Rules, there is no ambiguity regarding the identity of the Respondent in these proceedings. The WhoIs records display “Pinnacle Web Solutions India” as the registrant organization of the disputed domain name and no other name is reflected in the records. Further, the Registrar has confirmed that “Pinnacle Web Solutions India” is the registrant organization of the disputed domain name and has also disclosed “Geet Sethi” as the registrant name of the disputed domain name. Therefore, the Panel holds that the named registrant “Geet Sethi, Pinnacle Web Solutions India” is the Respondent in these proceedings as per the Rules.
In the email communications from the Respondent Geet Sethi, Pinnacle Web Solutions India to the Center, he states that he and his company have no administrative control over the disputed domain name and that he is not the real owner. However, his assertions do not change the Panel’s above assessment, for reasons that: (i) he has knowingly agreed to register the disputed domain name in his and his company’s name and he has given control of the disputed domain name to another person or entity knowing its ramifications; and (ii) the knowledge and intention of the person or entity who controls the disputed domain name and associated website must be considered as his knowledge and intention.
It has been consistently held by previous UDRP panels, in cases where a respondent registered a domain name on behalf of a client (beneficial holder of the domain name), both the respondent and its client are considered respondents in such cases. See Skoda Auto a.s.v GlobeHosting, Inc., Bogdan Hasnes, Evox Protrade SRL,WIPO Case No. DRO2019-0017, and FIL Limited v. Fidelity Capital Trade / Christia Brown, WIPO Case No. D2019-2169. Therefore, any reference to the term “Respondent” in these proceedings, refers to “Geet Sethi, Pinnacle Web Solutions India” and to his client “SS Khadi” unless it is necessary to refer them separately.
6.2. Substantive ElementsThe Complainant is required to establish three elements under paragraph 4 (a) of the Policy to obtain the remedy of transfer of the disputed domain name:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
The first element requires the Complainant to establish its rights in a trademark or service mark. The Complainant also needs to establish that the disputed domain name is either identical or confusingly similar to the trademark or service mark in which it has rights.
The Panel finds that the Complainant has demonstrated extensive use of the KHADI trademark and has provided evidence of its trademark registrations in India and in other jurisdictions. The Complainant’s portfolio of trademark registrations is evidence and testimony of its rights in the mark.
The disputed domain name is found to be confusingly similar to the Complainant’s trademark, as the KHADI trademark is clearly recognizable in the dispute domain name. The addition of the letters “ss” to the KHADI trademark does not prevent a finding of confusing similarity in UDRP proceedings. See Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel is satisfied that the Complainant has met the requirements under the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe Complainant is required to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name under the second element. If the Complainant makes a prima facie case that the Respondent lacks rights or legitimate interests, the Respondent can rebut the Complainant’s allegations with relevant submissions and supporting evidence to establish rights or legitimate interests in the disputed domain name. If the Respondent fails to make relevant submissions with supporting evidence, the Complainant is deemed to have satisfied the second element. See Section 2.1,WIPO Overview 3.0.
The Complainant has argued that the Respondent lacks rights or legitimate interests in the disputed domain name and does not use the disputed domain name in connection with a bona fide offering of products, but seeks to derive mileage from the KHADI mark, without any authorization for its use. The Complainant has also argued that the provisions of paragraph 4(c) of the Policy does not apply to the disputed domain name.
The Complainant has further submitted that it grants authorized user certification for selling goods or services under the KHADI trademark, which is premised on the Complainant’s policy and its role to encourage small manufacturers and rural industry. The Complainant has asserted that the Respondent has not obtained such authorization or certification to use the KHADI mark.
The Respondent Geet Sethi, Pinnacle Web Solutions India has contended that the beneficial holder of the disputed domain name is a person called Tilak Tiwari for the SS Khadi firm. The Panel, through a Procedural Order dated February 21, 2022, and an email communication dated March 21, 2022, specifically invited SS Khadi to send its comments on the Complaint. No reply or response was received from SS Khadi. In the absence of a response from SSKhadi or any evidence on record showing that SS Khadi has any rights or legitimate interests in the disputed domain name, this Panel’s views are consistent with the line of reasoning followed in previous UDRP cases, that the knowledge and intention of the person who controls the website must be considered as the knowledge and intent of the Respondent Geet Sethi, Pinnacle Web Solutions India. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642.
In circumstances where a respondent registered a domain name on behalf of another entity or person, and allows that entity or person to use the domain name, UDRP panels have observed that such situation could facilitate evading or circumventing legal proceedings. In World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, supra, the panel in that case observed that: “[…]a cyber-squatter would be able to achieve his or her bad faith ends by the simple expedient of arranging for an ‘innocent’ registrant to register the disputed domain name and allow the cyber-squatter to control its use.”
The Panel finds from the evidence, that the disputed domain name has been used for promoting products using the KHADI mark, but without authorization from the Complainant to be a licensed user of the mark.
Such use of the mark indicates an intention to derive mileage from the reputation associated with the mark, which does not establish that the Respondent have any rights or legitimate interests in respect of the disputed domain name.
Further, the Panel notes that the Respondent SS Khadi’s name resembles the disputed domain name. However, there is no evidence on record showing that the Respondent SS Khadi has been commonly known by the disputed domain name.
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. The second requirement under paragraph 4 (a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThe third element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent. Bad faith is generally found when the preponderance of facts and circumstances of the case indicate that the respondent has targeted a complainant’s mark with a view to derive unfair advantage from use of the mark in the disputed domain name. See Section 3.1, WIPO Overview 3.0.
The Complainant has made the following arguments alleging the Respondent has registered and used the disputed domain name in bad faith: (i) the Complainant has extensive prior rights for the KHADI mark and holds several valid trademark registrations that precede the registration of the disputed domain name; (ii) the Respondent has used the KHADI mark in the disputed domain name and on the website, without obtaining authorization for its use from the Complainant; and (iii) the Respondent’s website displays products and content in a manner that has a potential to misrepresent to customers and Internet users that the disputed domain name and website are associated with the Complainant and its business or that the products sold on the website are endorsed by the Complainant.
The Panel finds that the disputed domain name has been registered and used for promoting SS KHADI products. Various products have been offered through the website, such as masks, fabrics, and sanitizers. Under the “Milestone” link, the webpage mentions awards referencing the Complainant, such as “Awarded by Khadi Village Industry Commission 2014”, “Awarded by Khadi Village Industry Commission 2017” and it also mentions “Best Khadi fabric quality Manufacturer” and “Most khadi fabric Research done”. The use of the KHADI mark in the disputed domain name and manner of its use on the webpages are likely to mislead Internet users into believing that the Respondent and/or the website at the disputed domain name are authorized users of the KHADI mark.
The submissions of the Respondent Geet Sethi, Pinnacle Web Solutions India that the control of the disputed domain name has been given to his client do not absolve him of the actions of his client who allegedly uses the disputed domain name. In the Panel’s view, where two or more people have acted in concert to register and use a disputed domain name, the said people are jointly and severally liable for its registration and use. See The Goodyear Tire & Rubber Company v. Artemio Garza, Sunil Shahzad, Promotora Internacional de Neumaticos SA,WIPO Case No. D2020-0019, where the domain name was registered on behalf of a client, and the website was actually being operated by the client and not the registrant of the domain name. The panel in that case found that the parties acted in concert for the registration and use of the disputed domain name in bad faith. It was held that all the persons who acted in concert to create the situation of confusion concerning the ownership of the disputed domain name were liable as respondents in the case.
Seeking to mislead Internet users by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement is recognized as bad faith registration and use of the disputed domain name under the Policy. The Panel finds for the reasons discussed, that the registration and the use of the disputed domain name comes under the scope of paragraph 4(b)(iv) of the Policy.
The Panel concludes, on the basis of the foregoing discussions and findings, that the disputed domain name was registered and is being used with the intention of deriving advantage from the Complainant’s mark. It is accordingly found that the disputed domain name has been registered and is being used in bad faith. The Complainant has fulfilled the third element under paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Harini Narayanswamy
Sole Panelist
Date: March 27, 2022