WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Khadi & Village Industries Commission v. Domain Privacy Service Fbo Registrant, The Endurance International Group, Inc. / Nani Gopal Sarkar
Case No. D2021-2554
1. The Parties
The Complainant is Khadi & Village Industries Commission of India, represented by Fidus Law Chambers of United States of America.
The Respondent is Domain Privacy Service Fbo Registrant, The Endurance International Group, Inc. of United States of America / Nani Gopal Sarkar of India.
2. The Domain Name and Registrar
The disputed domain name <fabkhadiprivatelimited.com> is registered with FastDomain, Inc. (the “Registrar”). According to the Whois on the case file, the details of registration are as follows:
(a) Domain ID: 2589181861_DOMAIN_COM_VRSN
(b) Created on: 2021-02-04
(c) Expiring on: 2023-02-04
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also 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 and contact information in the Complaint.
The Center sent an email communication to the Complainant on August 10, 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 amendment to the Complaint on August 11, 2021.
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 August 13, 2021. In accordance with the Rules,
The due date for Response was September 2, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on September 3, 2021.
The Center appointed Dr. Vinod K. Agarwal, Advocate as the sole panelist in this matter on September 13, 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.
4. Factual Background
In the first instance it is clarified that the expression KHADI is a word of Indian (Hindi) language and means “hand woven cloth”.
The Complainant is a statutory body formed in April 1957 by the Government of India under the Act of Parliament, namely, “Khadi and Village Industries Commission Act, 1956”. The Head Office of the Complainant is in Mumbai and it has six zonal offices in different parts of India, namely, Delhi, Bhopal, Bangalore, Kolkata, Mumbai and Guwahati. Further, it has offices in 28 states of India for the implementation of its various programmes. Ever since its formation in the year 1957, the Complainant has been carrying on work related to implementation of programs for the development of Khadi and other Village Industries (KVI) in the rural areas in co-ordination with other agencies. The programmes offered by the Complainant are to promote products under the trademark KHADI. There are about 7 sales outsets directly owned by the Complainant out of 8050 sales outlets spread across the country all selling authorized/licensed products under the KHADI trademark.
The main function of the Complainant is to promote products under the trademark “KHADI”. The Complainant’s products bearing the trademarks “KHADI” are sold and showcased through exhibitions in various parts of the world. The Complainant has participated in several exhibitions and fairs to promote products and services under the KHADI trademarks and to encourage artisans, spinners, and weavers of India. Further, the Complainant has also partnered with brands such as Raymond and Titan to promote the products under the trademark KHADI in the Indian and global markets.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the present dispute.
In relation to the first element, the Complainant contends that the disputed domain name incorporates the Complainant’s trademark KHADI, in which the Complainant has statutory as well as common law rights by virtue of long and continuous use. As per the Act of Parliament of India the word “KHADI” is also a part of the company name of the Complainant.
The word “KHADI” is a registered trademark of the Complainant. The said trademarks of the Complainant are registered in various jurisdictions for a very long time. A consolidated list of all registered trademarks along with copies of the registration certificates were attached with the Complaint as Annexure F. All of the registrations are currently valid and subsisting. The said trademarks are registered in different classes and the earliest valid registration dates back to the year 1975.
The disputed domain name wholly comprises the Complainant’s well-known trademark KHADI and is therefore confusingly similar to the Complainant’s trademark/trade name KHADI. By virtue of prior adoption, long and continuous use and extensive publicity and promotion, the trade name and trademark “KHADI” have acquired tremendous goodwill and enviable reputation worldwide amongst the consumers and public in general. Thus, they are associated by the business houses and public exclusively with the Complainant and their businesses, services, and products.
Further, the Respondent registered the disputed domain name several years after the registration of the trademark KHADI by the Complainant. Furthermore, the trademark KHADI has not been used by anyone other than the Complainant or its authorized licensee or franchisee holders. The Respondent is not a licensee or franchisee of the Complainant and yet it has registered the confusingly similar disputed domain name with a view to ride upon the goodwill associated with the Complainant’s well known trademark KHADI and pass off their goods/services as that of the Complainant.
The registration of the disputed domain name by the Respondent is confusing inasmuch as it causes the public to believe that the Respondent is associated with the Complainant and also violates the Complainant’s trademark rights. Thus, the intention of the Respondent is to create confusion in the market and business circles.
The use of the trademark KHADI along with generic prefix “FAB”, which is a commonly used short form of “Fabulous” or “Fabric” and, suffix “Private Limited” clearly shows the mala fides of the Respondent to create an impression in the mind of the consumers that it is connected to the Complainant. The registration of a domain name containing the Complainant’s trademark KHADI does not render the disputed domain name distinguishable from that of the Complainant.
This disputed domain name has not been used in connection with a bona fide offering of goods or services by the Respondent. The disputed domain name has instead been used to advertise goods and services in violation of the trademark rights of the Complainant. The Respondent was using the disputed domain name to advertise their products under the mark KHADI and misleading the consumers into believing that they are in some manner affiliated to the Complainant by using the term KHADI in conjunction with general terms like “fab” and “private limited”.
Furthermore, the Respondent transferred the infringing domain name <khadifabric.com> to the Complainant earlier, which was hosting identical content to the disputed domain name, also and hence, the Respondent was well aware of the long and continuous presence of the Complainant in the market as well as of the statutory and the common law rights of the Complainant in the trademark KHADI. Therefore, the wrongful and misleading advertisements and the products appearing on the Respondent’s website demonstrate the Respondent’s intention of commercial use of the website to make unlawful gains. Thus, the question of being known by the disputed domain does not arise in the first place.
None of the exemptions provided under paragraph 4(c) of the UDRPapply in the present circumstances. The Complainant has not authorized, licensed or permitted the Respondent to register or use the Domain Name. The Complainant has prior rights in the KHADI trademark which precedes the registration of the disputed domain name by the Respondent.
In relation to the second element, the Complainant contends that by virtue of continuous and exclusive use since September 25th, 1956 as well as the promotion of the KHADI trademark by the Complainant, the general public and members of trade now recognize and associate the goods and services under the KHADI trademarks with the Complainant. The Complainant’s trademark “KHADI” has become highly distinctive of the goods and services of the Complainant on account of extensive use, viewership and promotion.
The Respondent registered the disputed domain name solely for misleading consumers. None of the exemptions provided under paragraph 4(c) of the Policyapply in the present circumstances. Further that, the Respondent is in no way related to the Complainant. The Complainant has not licensed or otherwise permitted or granted to the Respondent an authorization or a right to use their trademark or to apply for or use the domain name incorporating the trademark and that nobody would use the word “KHADI” unless seeking to create an impression of an association with the Complainant, thus, there are no legitimate rights or interests of the Respondent in the disputed domain name.
Regarding the third element, the Complainant contends that the disputed domain name was registered and used in bad faith and with a primary aim to disrupt the business of the Complainant, as well as take advantage of the goodwill and reputation associated with the Complainant’s trademarks.
The purpose and intent of the Respondent in adopting the disputed domain name is to benefit on the name, fame, reputation and image and goodwill of the Complainant which has been built up assiduously over the years. In other words, the Respondent has registered and is using the disputed domain name in bad faith with the intention to dupe, and wrongly attract internet users into believing that the Respondent is associated with the Complainant and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website.
The fact that the Respondent registered the disputed domain name comprising the Complainant’s mark KHADI in its entirety, subsequent to transferring a similar infringing domain name to the Complainant, acknowledging the Complainants right in the mark KHADI, is a clear indication of the bad faith by the Respondent. The act of using the disputed domain name and associated website to directly infringe the Complainant’s trademark creates confusion and demonstrates the Respondent’s wholly illegitimate purpose in registered and using the domain name.
Therefore, the registration and use of the disputed domain name by the Respondent was in bad faith and the requirement of Paragraph 4(a)(iii), 4(b) of the Policy read along with the Rules, paragraph3(b)(ix)(3) has been established.
In support if its contentions, the Complainant has relied on a number of UDRP cases filed before the WIPO involving the trademark KHADI, which have been decided in their favour. The said cases have been duly taken into consideration.
The Respondent did not submit any evidence or argument indicating its relation with the disputed domain name or any trademark right, domain name right, or contractual right.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove 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 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
According to the information submitted by the Complainant, the Complainant is the owner of several KHADI trademark registrations in many jurisdictions. The Complainant possesses a large number of other domain names that comprise the word “KHADI”. The Complainant has registered these domain names and registered its trademarks much before the date of registration of the disputed domain name by the Respondent.
The disputed domain name includes the trademark of the Complainant and is very much similar or identical to other domain names and the trademarks of the Complainant.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the disputed domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. In any case, the Respondent may be known by the name of The Endurance International Group, Inc. / Nani Gopal Sarkar. The Complainant has not authorized the Respondent to use the name and their trademark “KHADI”.
It is evident that the Respondent can have no legitimate interest in the disputed domain name. Further, in view of the fact that the Complainant has not licensed or otherwise authorized the Respondent to use its trademark or to use the disputed domain name incorporating the trademark of the Complainant, and based on the evidence included in the Complaint and amended Complaint, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its web site or location.
The Complainant contends that the domain name was registered or acquired by the Respondent primarily for the purpose of taking on some of the business from to the Complainant. The disputed domain name is being used with the intent to deceive the members of the public deliberately, with a view to trade upon and benefit on the name, fame, reputation, image, and goodwill acquired by the Complainant.
Further, as per the Complaint, in the past also the Respondent has transferred an infringing domain name to the Complainant, which was hosting identical content to the disputed domain name,
This and the other evidence submitted by the Complainant leads to the conclusion that the disputed domain name was registered and was being used by the Respondent in bad faith.
The Panel concludes that the registration of the disputed domain name amounts to the registration and use of the domain name in “bad faith”. Paragraph 4(a)(iii) of the Policy is satisfied.
In the light of the foregoing reasons, namely, that the disputed domain name is confusingly similar to the trademark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fabkhadiprivatelimited.com> be transferred to the Complainant.
Vinod K. Agarwal
Date: September 27, 2021