WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Khadi & Village Industries Commission v. Rajesh Kubadiya, Khadi Herbal Shop
Case No. D2020-2933
1. The Parties
The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Rajesh Kubadiya, Khadi Herbal Shop, India.
2. The Domain Name and Registrar
The disputed domain name <khadiherbalshop.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a clarification request by the Center, the Complainant filed an amendment to the Complaint on November 25, 2020.
The Center verified that the Complaint together with the amendment to the 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 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2020.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 5, 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 Background
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 and other jurisdictions. The present Complaint is based on the KHADI trademarks, both word and device marks.
The KHADI word mark is registered under class 24, number 2851542, registered on November 27, 2014, the KHADI word mark is also registered under other classes such as: KHADI word mark under class 1 bearing number 2851524, KHADI word mark number 2851525 under class 2, KHADI word mark 2851526 under class 3, KHADI word mark 2851527 under class 4, KHADI word mark 2851528 under class 5, KHADI word mark 2851529 under class 6, KHADI word mark 2851530 under class 7, KHADI word mark 2851531 under class 8, KHADI word mark 2851532 under class 14. The record shows the date of filing of the KHADI word mark applications is November 27, 2014 and date of first use of the mark, is September 25, 1956.
The evidence filed for the international registration of the KHADI word mark by the Complainant shows that it is registered under number 1272626, date of registration is December 2, 2014 and Australia trademark registration number 1734013, dated December 2, 2014.
The Complainant owns two KHADI device marks .
The Respondent registered the disputed domain name <khadiherbalshop.com> on November 19, 2014. The disputed domain name resolves to a parked webpage with no content except for some sponsored links. The archive shows that the disputed domain name was previously used by the Respondent to offer skincare, haircare and wellness products during the period 2014 to 2016. On the labels of the products, the Respondent displayed one of the Complainant’s KHADI device mark.
5. Parties’ Contentions
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 the three-fold objective of (i) Providing employment in rural areas, which is its social objective (ii) Economic objective of producing saleable articles and (iii) Wider objective of creating self-reliance among people to build a strong rural community spirit. The Complainant states it provides large scale employment to rural people, particularly weaker sections and rural women and its efforts generates employment in about 2,48,000 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 twenty-eight states and it has six zonal offices. The Complainant also implements the “Prime Minister’s Employment Generation Programs” for upliftment and improvement of artisans, weavers and other small- scale village and rural industries. The Complainant states it has many programs to help rural industries and is involved in building-up reserve of raw materials for supply to producers and creates common service facilities for processing of raw materials and finished goods. The Complainant states that among its many initiatives, it has introduced several interest subsidy schemes for artisans, weavers and members of small-scale village and rural industries.
The Complainant states that it has extensively promoted the KHADI trademark through exhibitions, trade-fairs and has organized events, competitions and shows to promote the mark. The Complainant states that it has collaborated with leading brands such as LAKME, TITAN and RAYMOND to promote the KHADI trademark. Collections of four designers were displayed during the Lakme Fashion Week, 14th edition and during Sustainable Fashion Day at Lakme Fashion Week on August 23, 2018 under the KHADI trademark. The Complainant has filed evidence of its extensive promotion of the KHADI mark through print and electronic media and evidence of its large following on social media platforms. The Complainant mentions that it operates a mobile phone application called “Khadi India”, which helps users locate the nearest Khadi store. As the KHADI mark has been extensively promoted by the Complainant, it claims the mark has acquired significant goodwill, fame and reputation.
The Complainant states it certifies and authorizes retail sellers, organizations, societies and institution to sell products under the KHADI trademarks. The Complainant states that an authorized user status for selling goods or services under the KHADI trademark is obtained by submitting an application to the Khadi Institutions Registration & Certification Sewa (KIRCS). The Complainant states it owns seven sales outlets and over eight thousand sales outlets sell KHADI licensed products. The Complainant asserts that its mark has been used since 1956 and “Khadi” is part of its trade name, corporate name and trading style for over sixty years. Therefore, the use of the KHADI mark by an unauthorized party, is likely to lead to confusion and deception among its patrons, members of trade, consumers and the general public.
The Complainant argues that the Respondent has misappropriated its trademark and requests for the transfer of the disputed domain name on the grounds that: (i) The disputed domain name is identical or confusing similar to the trademark in which the Complainant has rights (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name (iii) 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.
6. Discussion and Findings
The registration agreement for the disputed domain name is between the ICANN-accredited Registrar GoDaddy and registrant of the disputed domain name (the Respondent). Under the said agreement, the Respondent has agreed to be bound by the UDRP. A third party (Complainant) can make a complaint under the Policy, claiming that its rights have been violated by the registration and the use of the disputed domain name.
The Policy under paragraph 4(a) requires the Complainant to establish three elements to obtain the remedy of transfer of the disputed domain name, under the Policy these are:
(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.
A. Identical or Confusingly Similar
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.
The Complainant has provided evidence of its registered trademarks and has listed over 79 Indian and international trademark registrations it owns for the KHADI marks. The Complainant has also provided evidence of its extensive use and promotion of the KHADI marks. In the light of the evidence submitted by the Complainant, it is found that the Complainant has unequivocally established its rights in the KHADI mark.
The disputed domain name has the KHADI mark with the words “herbal” and “shop”. It is well established that merely adding words, numerals or punctuation marks to a trademark, does not prevent a finding of confusing similarity between the disputed domain name and the mark.
The Panel finds the disputed domain name is confusingly similar to the KHADI mark. The Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, the Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has argued that the Respondent has parked the disputed domain name and does not use it in connection with a bona fide offering of goods or services but seeks to derive mileage from the KHADI mark. The Complainant has also argued that none of the provisions under paragraph 4(c) of the Policy are applicable to the disputed domain name registered by the Respondent. Nothing in the material on record indicates that the Respondent uses the disputed domain name for non-commercial fair use purposes without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Given the evidence of previous use of the disputed domain name, by the Respondent, it is obvious that the Respondent used the disputed domain name to market products and has also used the Complainant’s KHADI device on the labels of the products. The Complainant has asserted that the Respondent is not an authorized user or a licensed user of the KHADI mark. The Complainant has indicated that authorized user status for selling goods or services under the KHADI trademark can be obtained by submitting an application to the Khadi Institutions Registration & Certification Sewa. Entities who are found to have satisfied the standards required under the use of the trademark can use the KHADI mark to sell products under the KHADI trademarks as an authorized user.
The Complainant is entrusted with the duty to supervise the legitimate use of the KHADI mark and granting the use of the trademark to entities who have satisfied the standards required under the use of the trademark. The KHADI mark is therefore like a collective / certification trademark, where the mark is used by many users and the standards governing the use of the mark is determined by a body or organization which is entrusted with task, which in the present case, is the Complainant for the KHADI marks. Collective trademark rights have been protected under the Policy in numerous cases.
Instances of previous 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 to the trademarks ASTI and ASTI SPUMANTE 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 Respondent has not taken part in these proceedings or provided any reasons for use of the KHADI mark in the disputed domain name. In the absence of any credible reason for registration of the disputed domain name bearing the KHADI mark and the fact that the disputed domain name is parked and resolves to a page with links, the reasonable inference under the circumstances discussed, is that the Respondent has registered the disputed domain name for purposes of deriving mileage from the Complainant’s trademark, which does not support a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
The Panel finds from the material on record, 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.
C. Registered and Used in Bad Faith
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 is distinctive and has been used extensively. The Complainant has prevailed in two other cases, where 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. 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 Panel notes 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 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 the KHADI mark is distinctive and the Respondent has failed to provide any explanation for actual or contemplated good faith use.
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, which is 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.
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 <khadiherbalshop.com> be transferred to the Complainant.
Date: January 19, 2021