The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Srinivas Balasani, India.
The disputed domain name <tskhadi.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 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 May 6, 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 May 11, 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 May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 9, 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.
The Complainant, Khadi & Village Industries Commission, is an Indian government organization under the Ministry of Micro, Small and Medium Enterprises (MSME). It is a statutory body created in the year 1957 under the Khadi and Village Commission Act of 1956. The Complainant promotes products under the KHADI trademark and has several trademark registrations for the KHADI mark in India (such as trademark no. 2851528 registered on November 27, 2014) and in other jurisdictions.
The Respondent registered the disputed domain name on January 26, 2017. The disputed domain name was previously being used in connection with promoting clothing products but is presently not used by the Respondent.
The Complainant has also submitted evidence that it has taken steps to oppose the Respondent’s trademark application for TSKHADI device mark. The details of which are: the Respondent has filed an Indian trademark application for TSKHADI device mark with the textual components “tskhadi”, under trademark application number 4332890, dated March 23, 2020. The Complainant has filed an opposition against the said mark before the Indian Trademark Office. The Complainant has stated that the Respondent has not filed a response to the opposition made by the Complainant till April 30, 2021.
The 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. Its operations are based on three main objectives:
(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 generates 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. Its offices are located in 28 states with six zonal offices. The Complainant implements the “Prime Minister’s Employment Generation Programs” for upliftment of artisans, weavers and small-scale village and rural industries. The Complainant states it programs help rural industries in building-up reserves of raw materials, creating common service facilities for processing raw materials and finished goods and also has interest subsidy plans for artisans, weavers and rural industries.
The Complainant states that due to its extensive promotion of the KHADI mark through exhibitions, trade-fairs, competitions, and shows, it has acquired goodwill, fame, and reputation. It has collaborated with leading brands such as Lakme, Titan, and Raymond to promote the mark. During the Lakme Fashion Week, 14th edition and the Sustainable Fashion Day at Lakme Fashion Week on August 23, 2018, collections of four designers were displayed under the KHADI mark. The Complainant has filed evidence of its promotion of the mark through print and electronic media and evidence of its large following on social media platforms. The Complainant’s mobile phone application called “Khadi India”, helps users locate the nearest Khadi Store.
The Complainant states that it certifies and authorizes retail sellers, organizations, societies, and institution to sell products under the KHADI trademarks, through the Khadi Institutions Registration & Certification Sewa (KIRCS). The Complainant states it owns seven sales outlets but 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, use of the KHADI mark, by an unauthorized party, may lead to confusion and deception among its patrons, members of trade, consumers and the public.
The Complainant requests for the transfer of the disputed domain name on the grounds that it 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 finally, that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
The Policy under paragraph 4(a) requires the Complainant to establish three elements to obtain the remedy of transfer of the disputed domain name, these are that:
(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 the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
To fulfil the requirement under the first element, it is necessary for the Complainant to establish its rights in the mark. The Complainant has provided evidence of its registered trademarks and has listed about 79 Indian trademark registrations and international trademark registrations for the KHADI marks. The Complainant has also provided evidence of its extensive use and promotion of the KHADI marks. Such evidence includes promotions through the media, exhibitions, and shows under the KHADI mark. The Complainant has also provided evidence of third-party recognition of its mark. Based on the evidence submitted, it is found that the Complainant has established its rights in the mark.
The Panel finds the essential part of the disputed domain name is the KHADI mark. Although the letters “t” and “s” are prefixed to the mark, the trademark is recognizable in the disputed domain name. The addition of letters with the trademark does not prevent a finding of confusing similarity between the disputed domain name and the mark. The KHADI mark is the dominant part of the disputed domain name, despite the additional letters “t” and “s”. The Panel therefore finds the disputed domain name is confusingly similar to the Complainant’s KHADI mark.
The Complainant has successfully established 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 therefore fulfilled the requirements under the first element of paragraph 4(a) of the Policy.
Under the second element of paragraph 4(a) of the Policy, the Complainant is required to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name. A prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name is sufficient to fulfil this requirement. See section 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. (“WIPO Overview 3.0”)
The contentions put forward by the Complainant arguing that the Respondent lacks rights or legitimate interests in the disputed domain name are:
(i) The provisions under paragraph 4(c) of the Policy are inapplicable to the disputed domain name;
(ii) The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, but is trying to derive mileage from the KHADI mark, without any authorization for its use;
(iii) Evidence of the Respondent’s previous use of the disputed domain name indicates that the Respondent has promoted articles of clothing using the disputed domain name which is likely to mislead Internet users; and
(iv) There are several references to the Complainant’s KHADI mark and the advertisements that were previously displayed on the Respondent’s website, which indicates the Respondent’s intention of making unauthorized commercial gain by using the Complainant’s KHADI mark in the disputed domain name.
The Panel notes that the Complainant, through KIRCS, is entrusted with the duty to supervise the legitimate use of the KHADI mark. The Complainant has authorized the use of the mark to many entities that have satisfied the required standards, and there are thousands of authorized users of the KHADI trademark. The KHADI mark is therefore analogous to a collective / certification trademark, where the mark is used by many licensed authorized users, but the standards governing the use of the mark is determined by a central body or organization, the Complainant in the present case.
The Panel finds that collective trademarks rights have been protected under the Policy in numerous cases. Some instances of previous UDRP cases pertaining to collective / certification trademarks are: Consorzio per la Tutela dell’Asti v. Ms. Stefanella Campo, WIPO Case No. D2004-0355 (<astispumante.info>), and Consorzio per la Tutela dell’Asti v. Mr. Giulio Bennatto, WIPO Case No. D2004-0350 (<spumanteasti.net>), regarding the trademarks ASTI and ASTI SPUMANTE that are used for sparkling wines and Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661, (<parmigiano.org>), pertaining to the collective trademarks for PARMIGIANO REGGIANO and PARMESAN cheese.
The Complainant has indicated that authorized user status for selling goods or services under the KHADI trademark can to be obtained by submitting an application to KIRCS. Entities that are found to have satisfied the standards required for the use of the trademark by the Complainant, are allowed to use the KHADI mark and sell products under the KHADI trademark as an authorized user. The Complainant has asserted that the Respondent is not an authorized user or a licensed user of the KHADI mark. The Complainant further asserts that the previous use of the disputed domain name by the Respondent for promoting clothing products using its mark, amounts to unauthorized use of the KHADI mark in the disputed domain name and therefore lacking in rights or legitimate interests.
The Respondent has not taken part in these proceedings or provided any reasons for use of the KHADI mark in the disputed domain name. The Panel finds the disputed domain name is currently inactive. Given the evidence of the previous use of the disputed domain name for promoting clothing products using the KHADI mark, without obtaining certification to be a licensed or an authorized user of the mark, indicates that the Respondent has used the disputed domain name with an intention to derive mileage from unauthorized use of the mark. The circumstances described, does not support a finding that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The second requirement under paragraph 4(a) of the Policy, has been fulfilled by the Complainant.
The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Complainant has established in these proceedings that the KHADI mark has been used and promoted extensively. The Panel notes that the Complainant has prevailed in other cases, where the reputation of the KHADI marks have been recognized as being a distinctive mark that is associated with the Complainant. See Khadi & Village Industries Commission v. Contact Privacy Inc. Customer 1245389705/ Raghav Somani, Headphone Zone Limited, WIPO Case No. D2020-2244 (<thekhadishop.com>), and Khadi & Village Industries Commission v. Himanshu Kumar Goel, Medisu Health Solutions, WIPO Case No. D2020-2162 (<justkhadi.com>).
In Khadi & Village Industries Commission v. Himanshu Kumar Goel, Medisu Health Solutions, supra, it was discussed that it is public knowledge that the term “khadi” transcends its dictionary meaning of merely referring to hand spun cloth but is representative of the struggles of rural industry. In Khadi & Village Industries Commission v. Rajesh Kubaiya, Khadi Herbal Shop, WIPO Case No. D2020-2933, this Panel observed that the term “khadi” also includes reference to the history of the Indian Freedom Movement and Mahatma Gandhi embracing “khadi” to promote village self-sufficiency and the spirit of community service. The Complainant’s continued efforts to protect the KHADI mark as the term “Khadi” inherently represents Gandhian principles.
The disputed domain name which uses the KHADI mark, is currently not being used by the Respondent. Passive holding or non-use of the disputed domain name supports a finding of bad faith, under the Policy, when the Complainant has demonstrated that its mark is distinctive and the Respondent has failed to provide any explanation for actual or contemplated good faith use. In the absence of any credible reason for registration of the disputed domain name bearing the KHADI mark, together with the fact that the disputed domain name is not being used, the reasonable inference under these circumstances, is that the Respondent has registered the disputed domain name for purposes of deriving undue advantage by using the Complainant’s trademark in the disputed domain name.
The material on record also shows that the Respondent has used the disputed domain name in the past with the intention of commercial gain. Internet users may have visited the Respondent’s site under the mistaken belief that they are visiting a site that is associated with the Complainant or anticipating that the owner of the site is an authorized user of the KHADI mark. However, the Respondent is an unauthorized user of the mark, but has used the disputed domain name with a commercial objective of deriving gains on the basis of the Complainant’s mark in an unauthorized manner, which is indicative of bad faith.
As described in the Factual Background above, the Complainant has also submitted evidence that it has taken steps to oppose the Respondent’s trademark application for TSKHADI device mark. The details of which are: the Respondent has filed an Indian trademark application for TSKHADI device mark with the textual components “tskhadi”, under trademark application number 4332890, dated March 23, 2020. The Complainant has filed an opposition against the said mark before the Indian Trademark Office. The Complainant has stated that the Respondent has not filed a response to the opposition made by the Complainant till April 30, 2021.
Given the distinctiveness of the KHADI mark, the registration and the use of the disputed domain name therefore comes under the scope of paragraph 4(b)(iv) of the Policy, namely, to attract Internet users to the Respondent’s online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement which is recognized as bad faith registration and use of the disputed domain name under the Policy.
Additional inference of bad faith can be drawn from the fact that the Respondent has taken down the contents of the website of its previous use of the disputed domain name, where clothing products were promoted by the Respondent using the KHADI mark. Further, the Respondent’s failure to provide complete and correct contact address to the Registrar for the domain name registration records, the Respondent’s failure to respond to the cease and desist notice sent by the Complainant, the Respondent’s lack of response in the trademark opposition filed by the Complainant, and finally the Respondent not having responded in the present proceedings, all add to the inference of bad faith on the part of the Respondent.
The Panel accordingly finds that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy, that the disputed domain name has been registered and is being used in bad faith.
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 <tskhadi.com> be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: June 23, 2021