Khadi & Vilage Commission (KVIC) is a statutory body by Indian Government, fomed under Khadi and Village Industries Commission Act, 1956. In March 2020, KVIC announced the revival of Khadi and Village Industries, vide public release here. Later this year Khadi & Village Commission (KVIC) filed various UDRP disputes over domain names containing the word Khadi citing lack of registration with KVIC, over JustKhadi.com, KhadiCulture.com & TheKhadiShop.com. Previously they also filed INDRP over khadi.co.in and iWearKhadi.in and were sucessful as the matter were not ex-parte, though the former was a generic term, while the later was an active website. Even the owners of KhadiCulture.com and TheKhadiShop.com seems to have shut down the website even before the last date of filinf of their respective responses, though the websites were active.
Background of KVIC:
i) The Complainant is a statutory body formed in April 1957 by the Government of India, under the Act of Parliament, ‘Khadi and Village Industries Commission Act of 1956’.
ii) The Complainant is the apex organization established under the Ministry of Micro, Small and Medium Enterprises (“MSME”). It’s objective is three fold:
(a) The social objective of providing employment in rural areas;
(b) The economic objective of producing saleable articles, and
(c) The wider objective of creating self-reliance amongst people and building up a strong rural community spirit.
iii) The Complainant, in April 1957, took over the work of former All India Khadi and Village Industries Board. The Complainant plays an important role in Indian economy as it generates employment in about 2.48 lakh villages throughout the country. Over the years, the Complainant has been providing large number of employment to rural people, including those belonging to scheduled castes and scheduled tribes and rural women in India. Its head office is in Mumbai, and its six zonal offices are in Delhi, Bhopal, Bangalore, Kolkata, Mumbai and Guwahati. Other than its zonal offices, it has offices in 28 states for the implementation of its various programmes.
iv) 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 coordination with other agencies. The programs offered by the Complainant are to promote products under the trademark KHADI. The Complainant also implements Prime Minister’s Employment Generation Programme (PMEGP) for upliftment and improvement of artisans, weavers and other members of small-scale village and rural industries. A brief note on the KVI programmes by Shri Nitin Gadkari, Union Minister for Micro, Small and Medium Enterprises dated 19th March, 2020.
v) The Complainant plans, promotes, organizes and implements programs for the development of Khadi and other village industries in rural areas nationwide. It also helps in building up reserve of raw materials for supply to producers. It focuses on the creation of common service facilities for processing of raw materials and semi-finished goods. In its effort to meet the core objectives the Complainant has introduced several interest subsidy schemes for artisans, weavers and other members of small-scale village and rural industries.
‘Khadi’ TRADEMARK
i) The Complaint is based on the trademark KHADI and its variations, registered in favour of the Complainant and, used in connection with goods sold and services offered by the Complainant and its authorized members. The Complainant owns numerous registrations for the wordmark KHADI, device marks and (hereinafter, the KHADI trademarks). All of the registrations are currently valid and subsisting.
ii) The Complaint’s KHADI Trademarks are also registered in various other jurisdictions/ regions.
iii) The Complainant adopted the trademark KHADI (which forms a part of its tradename, corporate name and trading style) on 25th September 1956 the same has been in use continuously till date. By virtue of its adoption more than sixty years ago, and extensive use thereof, the trademark KHADI has become exclusively and globally associated with the Complainant in the eyes of consumers. Therefore, use of this mark by any third party will lead to confusion and deception among the Complainant’s patrons, members of trade, consumers and general public.
iv) The Complainant is engaged in the promotion and development of the KHADI brand and the products under the KHADI trademark through the institutions certified by the Complainant.
v) 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 sales and promotions of KHADI certified products and services, each organization has to apply for recognition through the Khadi Institutions Registration & Certification Sewa (KIRCS).
vi) There are about 7 sales outlets directly owned by the Complainant out of 8050 sales outlets spread across the country all selling authorized/ licensed products under the KHADI trademarks. The KHADI trademarks are prominently featured on boards and hoardings of each store that is authorized to sell products under the KHADI trademarks.
vii) The Complainant’s KHADI trademarks are prominently featured on all the products sold by the Complainant in India and beyond.
viii) The Complainant’s products bearing the KHADI trademarks 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.
ix) The Complainant has been actively involved in the community service in its efforts to further promote its products and services under the KHADI trademarks including sponsorship and organization of various events, competition and shows.
x) For the purposes of promotion of the KHADI trademarks, the Complainant has also collaborated with the 14th edition of the Lakme Fashion Week, in which collections were made by four designer labels under the trademark “KHADI” and the same were exhibited during a designated Sustainable Fashion Day at Lakme Fashion Week on 23rd August 2018. 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.
xi) The Complainant’s products under the KHADI trademarks have been widely promoted through print and electronic media. This includes television programs, advertisements, articles, write-ups appearing in leading newspapers, magazines, journals, shopping festivals, exhibitions.
xii) The Complainant operates several social media platforms, such as Facebook, Twitter, YouTube, etc. all of which enjoy a wide followership.
xiii) Years of continuous efforts, time, capital, painstaking efforts and resources have been invested pursuant to which the KHADI trademarks have attained immeasurable goodwill and reputation so much so that the “KHADI” trademarks have attained paramount position and are identified exclusively with the Complainant.
xiv) The Complainant also operates a mobile application by the of name ‘Khadi India’. This application helps customers, patrons and members of trade in locating the nearest Khadi India Store.
xv) That by virtue of such continuous and exclusive use since at least 25th September, 1956 as well as the promotion of the KHADI trademarks by the Complainant, general public and members of trade now recognize and associate the goods and services under the KHADI trademarks with the Complainant and none other.
Comments:
KVIC has no monopoly over the generic term ‘Khadi’ or even the descriptive term contained in the disputed domain, whatsoever. Respondents registered the corresponding domain names in good faith in it’s generic / descriptive sense, purely because Khadi is widely used common term in the absence of KVIC’s mark (which never existed till 2015), and in any case, Respondents have never referred to KVIC or it’s graphical mark or tried to show any association with KVIC unnecessarily. It is further denied that the Respondent in any illegal manner or without KVIC’s Authority have registered the Domain Name containing the keyword KHADI. While Khadi is generic word used for the last 100 years in India and at the time of registration of the domain name, KVIC being Government Organization, it was just serving social objectives for promotion of cloth only, that too, in rural areas and there was no Trademark applied till November 2014. Further, there are various other websites rendering services using word Khadi in domain name.
It is pertinent to note that the Khadi and Village Commission Act 1956 just makes reference to “khadi” as any cloth woven on handlooms in India from cotton, silk or woolen yarn handspun in India or from mixture of any two or all of such yarns. [under Section 2 (d) – definitions]. The said Act further talks about promotion of Khadi cloth in rural areas under Section 15 of KVIC Act since its inception, while further sub-section have been inserted into the Act since 2006 only.
KVIC talks about the Revival of Khadi and Village Industries dated 19 March 2020, which KVIC refers to very recent initiative namely, PMEGP. Pursuant to which, it seems KVIC has filed various domain dispute complaint upon the disputed domain, without understanding the basis of domain dispute law, whether they can make claim to the domain name or not, when the Respondent is known by the Domain Name.
KVIC has failed to provide any information about itself, which could establish that in 2011-13 when the disputed domains were registered by the respective Respondents, that KVIC’s Trademark was particularly in existence, let alone that KVIC had any exclusive rights in the term. At no time prior to the domain name registration and putting the domain to use, the Respondent was aware of KVIC‘s mark, as it never existed. Though, KVIC may have been in existence since 1956 as claimed, but in every country the Government is supposed to serve its citizens through various public welfare measures and regulate various sectors in public interest. Though in any case, the Act mainly contained provisions as to Khadi as cloth only.
Accordingly, India has over 30 such commissions as listed here at wikipedia page, whereby it regulates various sectors like Agriculture, Telecom, Elections, Labour, Law, Finance, Space and Khadi. Now suppose today anyone sets up website www.agricultureseeds.com and starts business online but no one can expect that tomorrow, if any such Government Commission set up for promotion of Agriculture will come and say we have Trademarked the word – ‘Agriculture’ and no one can make use of it. The Respondent respects Government but if the intention was really exclusive, then the Respondent may have been contacted but the Respondent has never received any communication from KVIC ever as to any compliance like registration or any other requirements, before these domain dispute proceedings. Though in any case, it is dealing in Khadi products from dealers registered with KVIC only.
In any case, few of the Respondents are commonly known by the domain name as after having registered the Domain Name on 3rd December 2012, the Respondent at JustKhadi.com initiated the steps of incorporation of Company with limited Liability under Indian Companies Act, along with his associate at Delhi. On 16 July 2013, the Company ‘JUST KHADI INDIA PRIVATE LIMITED’ was successfully incorporated vide CIN Number U17291DL2013PTC255405 with the Respondent being one of the directors. Similarly, in the matter of KhadiCulture.com, Khadi Culture is a store in the city of Indore and hence knwon by the Domain Name. So when all the Respondents have shown demonstrable use of the disputed domain [WIPO Overview 3.0 Para 2.2] and moreover, he is commonly known by it [WIPO Overview 3.0 Para 2.3], then of course KVIC has no standing in these proceedings as UDRP is not court / forum to decide upon civil disputes between the parties.
The Domain Dispute policies are designed to deal with cases of purely cybersquatting, not applicable to disputes between parties with competing rights acting in good faith, hence such matters are out of the preview of the UDRP Policy. In this regard, the Respondent submits that the origin of this basis can be found in the Final Report of the WIPO Internet Domain Name Process (April 30, 1999) at Para 135 (i) and similar references can be located in the Second Staff Report on UDRP (24 October 1999) at Para 4.1 clause (c). See Ni Insan Kaynaklari Personel v. Timothy Michael Bright, D2009-0315 (WIPO May 7, 2009) (“An administrative proceeding under the Policy is not proceeding in ‘equity’ in which panel seeks to generally determine whether one party or another has acted more or less fairly toward the other, thereafter fashioning ‘just’ remedy. A proceeding under the Policy is not an assessment of civil trademark infringement.” Also see Audi AG v. Stratofex [WIPO D2012-1894 – AUDICITY.com], Credit Management Solutions v. Collex Resource Mgmt. [WIPO D2000-0029] and Argenta Spaarbank NV v. Barbara Lesimple [WIPO D2015-0467].
In Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”).
Obviously, KVIC does not have any rights in the Trademark in each and every class since 1956, as the Government in any country may establish various organizations / commissions to regulate various sectors. Even the functions of the Complainant Organization in terms of the law just included regulation of ‘Khadi’ Cloth in rural areas. The same stance has been taken by german Company owner at Khadi.de before EUIPO where KVIC tried challenging their Trademark Registration and failed. See here