WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Khadi and Village Industries Commission v. Ankit Nayyar, Shri Siddhivinayak Provital LLP
Case No. D2021-2138
1. The Parties
The Complainant is Khadi and Village Industries Commission, India, represented by Fidus Law Chambers, India.
The Respondent is Ankit Nayyar, Shri Siddhivinayak Provital LLP, India.
2. The Domain Name and Registrar
The disputed domain name <khadieconest.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 July 5, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2021, 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. The Center sent an email to the Parties to providing them with the additional registrant information received from the Registrar on July 7, 2021. The Complainant filed an Amended Complaint on July 9, 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 July 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. The Respondent sent informal communications to the Center on July 15, 2021 but did not submit any formal response.
Accordingly, the Center notified the Commencement of Panel Appointment Process to the parties on August 2, 2021. The Center received informal communications from the Respondent and an unidentified party between August 2, 2021, and August 3, 2021.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on August 6, 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 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 in other jurisdictions.
The KHADI word mark was registered on November 27, 2014 under No. 285154, in class 24. 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 trademark Registration of the KHADI word mark by the Complainant shows that it is registered under No. 1272626, registered on December 2, 2014 and the Australia trademark registration No. 1734013, registered on December 2, 2014.
The Respondent registered the disputed domain name on December 6, 2020. The disputed domain name resolves to a webpage promoting haircare products, skin care products, and essential oils under the mark KHADI ECONEST. The Respondent has currently removed the webpage content from the disputed domain name to the domain name <khadi-econest-india.business.site>. The Complainant sent a legal notice to the Respondent by email on March 31, 2021, requesting transfer of the disputed domain name. In his reply to the Complainant’s notice, the Respondent had agreed to comply with the request, but failed to do so. Therefore the present Complaint was filed by the Complainant seeking transfer of the disputed domain name.
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 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 twenty-eight 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 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 eight thousand 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 send a formal response but sent several emails to the Center. The Panel notes that although the Respondent choose not to partake in these proceedings by filing a formal response, the Respondent has availed numerous opportunities to communicate with the Complainant and the Center.
The Respondent in his email communications riles against the Complainant’s counsel, alleging that they lack authorization and requested for document showing the Counsel is the authorized representative of the Complainant. The Respondent also accuses the Complainant of not taking action against other infringers of the KHADI mark and of harassing the Respondent and his start-up business. The Respondent made other accusations and threats in his email communications and even threatened to file court cases against the Center.
6. Discussion and Findings
The Respondent has signed the domain name registration agreement with the Registrar. The Respondent becomes bound by the Policy when he enters into the agreement for registration of the disputed domain name. If a third party (the Complainant / owner of the trademark) makes a complaint under the Policy, claiming that its rights have been violated, due the registration and use of the disputed domain name, the registrant of the disputed domain name / the Respondent becomes a party to the administrative proceeding under the Policy. The Respondent is entitled to take part in the proceedings under the Policy and is entitled to file a response to the Complaint.
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:
(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 relied on its registered trademarks to prove its rights in the KHADI mark and has provided a list of its numerous Indian trademark registrations and international trademark registrations. The Complainant has also relied on its common law rights in the mark and has provided evidence of its extensive use and promotion of the KHADI marks in the media, through exhibitions, organizing shows, and evidence of third-party recognition of its mark. Based on the evidence, it is found that the Complainant has established its rights in the mark.
The disputed domain name contains the KHADI mark with the term “econest”. The Panel finds that the KHADI mark is the dominant part of the disputed domain name. The term “econest” with the KHADI mark does not prevent finding of confusing similarity. The disputed domain name is accordingly found to be confusingly similar to the Complainant’s KHADI mark.
The Panel finds that 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.
B. Rights or Legitimate Interests
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. An adequately pled, with relevant facts and arguments, and unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name is normally sufficient to fulfil this requirement; the burden always remaining on the Complainant. See section 2.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. (WIPO Overview 3.0)
The Complainant has put forward the following contentions arguing that the Respondent lacks rights or legitimate interests in the disputed domain name: (i) the provisions under paragraph 4(c) of the Policy are not applicable to the disputed domain name, (ii) the Respondent does not use the disputed domain name in connection with a bona fide offering of products 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 products under KHADI ECONEST by using the disputed domain name, which is likely to mislead Internet users that the Respondent is an authorized user of the KHADI mark, and (iv) the Respondent’s use of the KHADI mark to promote and display products on the Respondent’s website, indicates his intention to make commercial gain by using the mark.
As mentioned previously, the Respondent did not taken part in these proceedings or file a formal Response to the Complaint. Under the Rules paragraph 14(a), if a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules, the Panel shall proceed to a decision on the complaint. Further, under the Rules paragraph 14(b), if a party in the absence of exceptional circumstances does not comply with any provision of, or requirement under the Rules, the Panel has the discretion to draw such inferences therefrom as it considers appropriate. The Panel therefore proceeds accordingly.
The Panel finds from the evidence, that the disputed domain name has been used by the Respondent for promoting products using the KHADI mark, but without obtaining authorization or certification to be a licensed user of the mark. The evidence also indicates that the Respondent has used the disputed domain name with an intention to derive mileage from unauthorized use of the mark.
The Panel further finds that the Respondent is clearly aware that the Complainant grants authorized user certification for selling goods or services under the KHADI trademark. The Respondent is also aware that such authorization to use the mark can be obtained by submitting an application to the Complainant under the regulations for use of its mark.
The Respondent, in his email to the Center dated July 15, 2021, has stated:
“Khadi is a government Organization where I am registered and I am sharing my certificate with you”
and further adds:
“Attached below are the certificate and tweet of Khadi where they have shown clearly that we can apply and use the name Khadi. We have applied for that and hopefully we will get the approval by August 2021.”
The Respondent has filed a document that shows he has attended an online program conducted by the Complainant, called the Entrepreneurship Development Program under the Prime Minister’s Employment Generation Program Scheme. The certificate mentions that the training start date is February 19, 2021 and the end date is March 2, 2021. A tweet from the Complainant is also attached to the Respondent’s email. The text of the tweet from the Complainant is reproduced here verbatim:
“Individuals or certified Khadi institution who wish to make registering for Khadi Mark for the first-time need submit an application in a specified form to Central Khadi Mark Committee.
In case of renewal, the application needs to be submitted to the Zonal Khadi Mark Committee.”
The above material sent by the Respondent, shows that the Respondent is obviously aware that an application needs to be made to the Complainant in order to be a registered authorized user or a registered licensee of the KHADI mark. Nevertheless, the Respondent has registered the disputed domain name without obtaining the required authorization from the Complainant, prior to registration of the disputed domain name. Furthermore, the Respondent has not submitted any evidence of having made such an application. The document that the Respondent has sent with the email is a certificate of participating in an online training / development Program offered by the Complainant, and nothing in that certificate indicates that the Respondent is authorized to use the KHADI mark.
A training certificate is clearly not an authorization for use of the KHADI mark. Furthermore, the date of the online Entrepreneurship Development Program is February 19, 2021, which is about two months after registration of the disputed domain name on December 6, 2020. Therefore, it is possible that the Respondent has enrolled for the development / training program perhaps as an after-thought, in a bid to give some legitimacy to the registration and use of the disputed domain name. The certificate for participation in the development program therefore, does not by itself prove that the Respondent is a registered authorized user of the KHADI trademark or that he has made an application to be an authorized user of the mark.
The Panel furthermore notes that above all the Complainant has also confirmed that the Respondent is not authorized to use the KHADI mark and is not a licensed user of the KHADI mark. The Complainant has argued that the use of the disputed domain name by the Respondent for promoting products using its mark is unauthorized use of the KHADI mark in the disputed domain name that lacks rights or legitimate interests.
The Respondent has also chosen not to file a Response, choosing instead to send emails with misleading statements and has not provided evidence that show rights to use the KHADI mark. Failing to file a proper response by the Respondent, who has sent several emails that are unsupported with any relevant material does not help the Respondent’s case, and does not indicate that the Respondent has rights or legitimate interests in the disputed domain name.
Having viewed the entire set of facts and circumstances, the Panel finds that the reasonable inference is that the Respondent has registered and used the disputed domain name while unauthorized to use the mark, which does not support a finding that the Respondent has any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has made out a 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 evidence and material on record shows that: (i) The Complainant has demonstrated that the KHADI mark has acquired goodwill and reputation due to the extensive use and promotion of the mark (ii) the Respondent has likely knowledge of the Complainant’s rights in the mark and the reputation associated with the mark (iii) The Respondent’s website content shows the disputed domain name has been used for commercial purposes (iv) Moving the contents of the website by the Respondent to a business site, where the KHADI mark is displayed on the website also shows his intentions to use the KHADI mark for purposes of commercial gain (iv) failure of the Respondent to present credible evidence that supports the rationale for registering the disputed domain name (v) misleading statements and unwarranted threats made by the Respondent in his emails further weakens the Respondent’s case.
Internet users may have visited the Respondent’s site under the mistaken belief that they are visiting the site of an authorized user of the KHADI mark or is associated with the Complainant. Based on the foregoing, it is fair to state there is no other plausible conclusion, except that the Respondent has knowingly used the mark in the disputed domain name for commercial gain in an unauthorized manner to derive unfair gains based on the reputation of the mark. The use of the disputed domain name in this manner by the Respondent shows that he has intentionally attempted to attract Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of his website for commercial gain and for deriving mileage from the use of another’s trademark. Such registration and use of the disputed domain name is indicative of bad faith 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 used in bad faith. The Panel finds the Complainant has proved the three elements required under the Policy.
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 <khadieconest.com> be transferred to the Complainant.
Date: August 20, 2021
No Prejudice to Respondent’s rights
A. Respondent’s ECONEST Trademark
The Panel also states that this decision is made without prejudice to any rights that the Respondent may have in his mark ECONEST.
Alternatively, in the event that the Respondent makes a proper application for authorized use of the mark and is found to have satisfied the requirements and is granted the status of authorized user of the KHADI mark by the Complainant, the disputed domain name can be transferred back to the Respondent.
B. Authorized Use of KHADI mark
The Panel adds here that, should the Respondent wish to make an application for authorized use of the KHADI mark, and his application is found to satisfy the Complainant’s rules, the findings in this order / decision should not prejudice the Respondent’s application for authorized usership of the Complainant’s mark. This is premised on the Complainant’s primary social objective of creating “self-reliance amongst people”.
The Complainant has the responsibility to grant authorized use of its mark to applicants who have fulfilled the requirements under its rules for authorized use of the KHADI mark. The Complainant has clearly stated in the Complaint:
“The Complainant authorizes various retail sellers, organizations, societies and institutions to sell products under the KHADI trademarks. In order to be listed as an authorized user of the KHADI trademarks for purpose of sale and promotions of KHADI certified products and services, each organization has to apply for recognition through the Khadi Institutions Registration & Certification Sewa (KIRCS).”
If the Respondent should make an application in the proper manner, and is found to have satisfied the criteria as per the rules set down by the Complainant, for being considered, In the light of the Complainant’s social responsibilities, this order / decision should not prejudice an application made by the Respondent seeking an authorized / licensed user status for the KHADI mark or be a barrier for assessing his application on its merits for being considered an authorized user of the KHADI mark.