Khadi & Village Industries Commission v Fahad Hafiz, Syndicate Group

WIPO Case No. D2024-4848

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Khadi & Village Industries Commission v. Fahad Hafiz, Syndicate Group

Case No. D2024-4848

1. The Parties

The Complainant is Khadi & Village Industries Commission, India, represented by Fidus Law Chambers,

India.

The Respondent is Fahad Hafiz, Syndicate Group, India.

2. The Domain Name and Registrar

The disputed domain name <khadi.fit> 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 25, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2024, 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 (Unknown, Domains By Proxy, LLC) and contact information in the Complaint.

The Center sent an email communication to the Complainant on November 27, 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 amendment to the Complaint on November 27, 2024.

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 December 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2024.

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The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 3, 2025. 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 a statutory body created by the government of India under the Khadi and Village
Commission Act of 1956. The Complainant runs various development programs that provides employment
in rural areas. Among the products that the Complainant encourages to develop rural industry and handicraft
is the iconic fabric called “khadi”. The Complainant along with its authorized retailers promotes and sells
products under the KHADI trademark.

The Complainant owns several trademark registrations for the KHADI mark in India and other jurisdictions. number 2851542 and registration date November 27, 2014 (date of first use September 25, 1956). The mark is also registered with the same registration date under other classes such as KHADI word mark under class 25 with registration number 2851543, KHADI word mark with registration number 2851544 under class 26.

The disputed domain name was registered on June 28, 2024. The disputed domain name resolves to a parked page with pay-per-click (“PPC”) links (Annex J of the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant contends that it provides socio-economic benefit to rural industry in India through its programs that generate large scale employment for rural weaker sections and rural women. Its efforts provide employment in about 2,48,000 villages in India.

The Complainant states that its programs for the development of Khadi and other village Industries in rural areas are in coordination with other agencies. The Complainant states that it also implements the “Prime Minister’s Employment Generation Programs” for upliftment of artisans, weavers and small- scale village and

rural industries.

The Complainant states that the KHADI trademark has acquired significant goodwill due to its extensive promotion at exhibitions and trade-fairs and collaboration with many leading brands. For instance, the collections of four design labels were displayed during the Lakme Fashion Week ,14th edition on August 23, 2018 under the KHADI mark. The Complainant has filed evidence of its extensive promotions through print and electronic media and several exhibition and events.

The Complainant states that it authorizes retail sellers, organizations, societies and institutions to sell products under the KHADI trademark. Notably, the Complainant states that the Khadi Institutions Registration & Certification Sewa (KIRCS) authorizes users to use the KHADI trademark by submitting an application to KIRCS. The Complainant states that it has over eight thousand sales outlets that sell KHADI licensed products and owns seven sales outlets.

The Complainant asserts that it has used the mark since 1956 and “Khadi” is part of its trade name and its corporate name for over sixty years. The use of the KHADI mark by an unauthorized party is therefore likely to mislead its consumers and the public and adds that the disputed domain name is confusingly similar to its

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mark. The Complainant has submitted that the Respondent lacks rights and legitimate interest in the

disputed domain name, and that it is registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy under paragraph 4 (a) requires a 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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has provided evidence of numerous registered trademarks for the KHADI mark which it owns. Based on the evidence on record, the Complainant has established its rights in respect of the KHADI trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The disputed domain name contains the KHADI mark in its entirety and the generic Top-Level Domain “. fit”.
The trademark is recognizable in the disputed domain name. Accordingly, the disputed domain name is
confusingly similar to the mark for purposes of the first element of the Policy. WIPO Overview 3.0, section
1.7.

The Panel finds the first element of the Policy has been met by the Complainant. The disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Respondent is not known by the disputed domain name or demonstrated any legitimate reason for the registration of the disputed domain name. The record shows the Respondent is using the disputed domain name in relation to a website featuring PPC links to

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third-party websites that compete with the Complainant's business. Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise

mislead Internet users. WIPO Overview 3.0 at section 2.9.

The Panel notes that there is no evidence on record of any authorization having been obtained by the Respondent from the Complainant to use the mark. Under the circumstances, the Respondent’s unauthorized use of the Complainant’s mark is not indicative of the Respondent rights or legitimate interests in the disputed domain name.

For the reasons discussed, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not provided any relevant submissions or evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise.

The Panel finds the second element of the Policy has been established by the Complainant.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a)(iii) of the Policy requires the Complainant to establish the disputed domain name has been registered and used in bad faith by the Respondent. The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy specifies circumstances, in

particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and
use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and is being used in bad faith, but other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

(i) Circumstances indicate that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii)       The respondent has registered the 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 the respondent has
engaged in a pattern of such conduct; or

(iii)      the respondent has registered the 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 the respondent’s website or other online location, by creating a likelihood
of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the
respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant has submitted evidence to support its contentions that the KHADI trademark is widely known and was registered and used many years prior to the registration of the disputed domain name. The Complainant has argued that the registration and use of the disputed domain name shows the Respondent’s intent to benefit from the reputation associated with its mark. The Respondent has not participated in these proceedings or sent any communications indicating any undisputable reasons for registration of the disputed domain name.

The material on record shows that, given the circumstances, the Respondent has not used the disputed domain name for any legitimate purpose but has merely parked it with PPC links. It has been consistently found by UDRP panels that the registration of a confusingly similar domain name to a widely known

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trademark by someone who is not affiliated with the owner of the trademark and has not shown good reason
for registration of the disputed domain name or its legitimate use, can by itself create a presumption of bad
faith. WIPO Overview 3.0, section 3.1.4.

Notably, panels have found that a disputed domain name that is parked and which is likely to capitalize on the goodwill or reputation related to a complainant’s mark with an intention to mislead Internet users, constitutes bad faith under the Policy. WIPO Overview 3.0, section 2.9. Having reviewed the available record, the Panel finds that the Complainant’s mark is reputed and distinctive, and the Respondent has not provided any reasons for the registration of the disputed domain name, or any potential good faith use for it. The entire set of circumstances described here shows bad faith registration and use as envisaged under paragraph 4(b) of the Policy.

The Panel finds that the Complainant has established the third element of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. The Complainant has satisfied the requirements under the Policy for a transfer of the disputed domain name.

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 <khadi.fit> be transferred to the Complainant.

/Harini Narayanswamy/
Harini Narayanswamy
Sole Panelist
Date: January 17, 2025