ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Khadi & Village Industries Commission v. suresh thudimilla Case No. D2024-1593 1. The Parties The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India. The Respondent is suresh thudimilla, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2024. On April 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Privacy Guardian, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2024, 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 April 24, 2024. 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 May 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2024. On May 18, 2024, the Respondent submitted an extension request for Response to the Center. On May 23, 2024, the Center extended the due date for Response to May 27, 2024. Response was filed with the Center on May 27, 2024.
page 2 The Center appointed Steven A. Maier as the sole panelist in this matter on May 31, 2024. 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 Background The Complainant is statutory body, established in India in April 1957 by an Act of Parliament. Its purposes include the provision of employment in rural areas. The Complainant offers various development programs to promote a variety of products under the trademark KHADI, sold by Complainant as well as by authorized retailers and other institutions. The Complainant is the owner of numerous registrations for trademarks comprising or including the mark KHADI in territories around the world. Those registrations include, for example: - India trademark registration number 2851542 for the word mark KHADI, registered on November 27, 2014 in International Class 24; and - International trademark registration number 1272626 for a figurative mark KHADI, registered on December 2, 2014 in International Classes 1, 3, 5, 16, 18, 20, 21, 23, 24, 25, 26, 27, 29, 30, 32, and 35. The Complainant operates a website at “www.kviconline.gov.in”, which includes a page headed “GUIDELINE FOR KHADI INSTITUTION REGISTRATION”. The disputed domain name was registered on November 4, 2023. At the time of filing the Complaint, the disputed domain name resolved to a “parking page” indicating that the disputed domain name was for sale for USD 1,950. 5. Parties’ Contentions A. Complainant The Complainant states that it has made continuous and extensive use of the KHADI trademark since September 1956. It explains its system of authorization of retail sellers, societies and institutions to sell products under the KHADI trademark. It also exhibits media coverage of its collaboration with designer fashion brands and of other public exposure of the mark. The Complainant states that its KHADI trademark has been declared a “well-known” trademark by the High Court of Delhi, India and that it has been successful in numerous prior proceedings under the UDRP in which its trademark rights have been duly recognized. The Complainant submits that these include proceedings against respondents based in the United States, e.g., Khadi & Village Industries Commission v. Lakshmi Saya, WIPO Case No. D2021-4031, concerning the domain name . The Complainant submits that the disputed domain name is confusingly similar to its KHADI trademark. It states that the disputed domain name incorporates that trademark in full, and that the addition of the term “expo” does not serve to distinguish the disputed domain name from its mark, and in fact suggests to Internet users that it relates to an exhibition being organized by the Complainant. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its KHADI trademark, and that the only use the Respondent has made of the disputed domain name is to offer it for sale. The Complainant contends that this activity does not give rise to rights or legitimate interests in respect of the disputed domain name, and indeed that there is no bona fide use that the Complainant could make of the disputed domain name, since any such use would inevitably violate its trademark rights.
page 3 The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant contends that its trademark KHADI is well known and that it is extremely unlikely that the Respondent would have registered the disputed domain name without any knowledge of that trademark. It contends that the registration of a domain name similar to a well-known trademark raises in itself a presumption of bad faith. The Complainant reiterates that the Respondent has made no use of the disputed domain name other than to offer it for sale and submits that the Respondent registered the disputed domain name primarily for the purpose of gaining a commercial advantage by selling it to the Complainant. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent asserts that the Complainant has pursued a policy of aggressively pursuing proceedings under the UDRP against any party registering a domain name which includes the term KHADI. The Respondent submits that it is in the legitimate business of developing websites and registering domain names for possible future use. It states that it has no intention of infringing the Complainant’s trademark when it registered the disputed domain name. The Respondent denies that the disputed domain name is confusingly similar to the Complainant’s trademark KHADI. It contends that the addition of the term “expo” fundamentally alters the commercial impression created by the disputed domain name and distinguishes it from the Complainant’s trademark. The Respondent states that it has not hosted any content on the disputed domain name nor caused any confusion with the Complainant’s trademark. It states that it is willing in the future to ensure that any website linked to the disputed domain name will include prominent disclaimers, distinct branding and design, and will not use the term KHADI as primary branding or for the purpose of any search engine optimization. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. A. Identical or Confusingly Similar The Complainant has established that it has registered trademark rights in respect of the mark KHADI. The disputed domain name wholly incorporates that trademark, together with the additional term “expo”, which does not prevent the Complainant’s trademark from being recognizable within the disputed domain name. The Panel rejects the Respondent’s assertion that the additional term “expo” renders the disputed domain name fundamentally different from the Complainant’s trademark: see e.g., section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which provides: “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 mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
page 4 The Panel finds that the Complainant’s trademark KHADI is clearly recognizable within the disputed domain name and that the addition of the term “expo” does not prevent a finding of confusing similarity under the first element. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The registrant of a domain name, including a dealer in or developer of domain names, may be able to establish rights or legitimate interests in circumstances where it can demonstrate that the domain name in question is based on a dictionary term, that it has used the domain name legitimately in connection with that dictionary meaning, and that it has not targeted any relevant third-party trademark rights. Those circumstances do not obtain in this case. There is no evidence before the Panel that the term KHADI has any dictionary meaning, or any meaning in commerce other than to refer to the Complainant’s trademark and the goods and services duly authorized under that mark. Moreover, while asserting that it registered the disputed domain name in the course of its legitimate business as a web developer, the Respondent provides no explanation for its choice of the name and mark KHADI as the dominant element of the disputed domain name. In the circumstances, the Panel infers that the Respondent registered the disputed domain name with the intention of targeting that trademark, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel finds the Complainant’s trademark KHADI to be distinctive and to have become widely and exclusively associated in commerce with the Complainant’s authorized products. The Respondent has offered no explanation for its choice of the trademark KHADI as the dominant element of the disputed domain name and the Panel infers in the circumstances that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of benefitting unfairly from the goodwill attaching to that trademark. The Panel finds further that the disputed domain name is inherently misleading, in that it inevitably misrepresents to Internet users that it relates to an official or authorized exhibition or other exposition of the Complainant’s products. The Panel accepts the Complainant’s submission that the registration of the disputed domain name represents opportunistic bad faith in the circumstances. Given the inherently misleading nature of the disputed domain name, it is difficult to conceive of any use that the Respondent could legitimately make of the disputed domain name without the authorization of the Complainant. No use has been made of the disputed domain name other than to offer it for sale, and the Panel finds in these circumstances that Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy). The Respondent’s assertions as to how it may use the disputed domain name in the future do not nullify its actions to date and are immaterial to the Panel’s conclusions as to the registration and use of the disputed domain name in bad faith. The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith.
page 5 7. Decision For 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 be transferred to the Complainant. /Steven A. Maier/ Steven A. Maier Sole Panelist Date: June 10, 2024
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