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[By Dongtao Li]
- Basic Information
The Complainant is Irish Concentrate Process Company (also named as the "Seven-Up International Company", Add: 20 Reid Street Williams House Hamilton, HM-11 Bermuda).
The Respondent is Chaowei Yang, a Chinese citizen.
The Internet Keyword that is the subject of this Complaint is <七喜>, the Chinese transliteration of the English trademark 7-UP.
The case was resolved at the CIETAC Internet Keyword Dispute Resolution Center (the Center) on July 18, 2002. The Panelist is Dongtao Li.
The Complainant is a shell [B1] company for the well-known enterprise in the world, PepsiCo Corporation. Its product “Seven-Up” drink has been listed as one of the top ten alcohol-free drinks in the world and has been sold in China in large quantities.
In August 2001, the Respondent registered a "七喜" Internet Keyword in Chinese characters and referred it to an inaccessible address <http://www.7up.com/index.html>.
The Complainant has registered the "七喜" trademark in China National Trademark Bureau before the Respondent registered the disputed Internet Keyword.
During the course of hearing the dispute, the Complainant’s proxy negotiated with the Respondent on the phone for the transfer of "七喜", the latter clearly expressed that the Internet Keyword at issue could be transferred to the Complainant and the transfer fee negotiated was between RMB 50000 and 80000. The whole process was notarized. However, the parties didn’t reach an agreement before the outcome of this hearing.
C. The Complainant’s contentions
Complainant asserted that it is the real owner of "七喜" trademark and is entitled to the prior right of this mark. Complainant further asserted that the Respondent is not entitled to any legal rights on "七喜" mark. So, the disputed Internet Keyword shall be transferred to the Complainant because it is confusingly similar to the Complainant’s legal interests and the activities of the Respondent are in bad faith.
D. The Response
The Respondent denied Complainant’s claims and counter-argued that it was against the principle of honesty and credibility for the Complainant who used trap to acquire evidence and tempt the Respondent to offer for transferring the Internet Keyword during their telephone negotiation. Hence, he asked the Center not to admit the notarized discussion as evidence.
E. CNNIC Internet Keyword Disputes Resolution Policy
Article 4 states that support of a Complainant against a registered Internet Keyword is subject to the following conditions:
- The Complainant holds legal rights or interests protected by Chinese laws;
(ii) The disputed Internet Keyword is identical or similar to a name that the Complainant holds the legal rights or interests;
(iii) The registrant has no legal rights or interests with respect to the Internet Keyword or major part thereof;
(iv) The registrant has registered or used the Internet Keyword in bad faith.
The Complainant shall bear the burden to proof in this type of claims.
In addition, Article 5 states that any of the following circumstances may be the evidence of the registration and use of an Internet Keyword in bad faith:
(i) Circumstances indicating that the Internet Keyword was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Internet Keyword to the Complainant who is the owner of civil rights or interests or to a competitor of that Complainant for illegal benefit; or
(ii) The Internet Keyword was registered more than once in order to prevent the owner of legal rights from reflecting the legal name in a corresponding Internet Keyword, provided that the registrant has engaged in a pattern of such conduct; or
(iii) The Internet Keyword was registered or acquired primarily for the purpose of damaging the Complainant’s reputation, disrupting the Complainant’s normal business or creating a likelihood of confusion with the Complainant so as to mislead the public;
(iv) Other circumstances which may prove bad faith.
In this case, the Administrative Panel found that the act of the Respondent was in bad faith because:
- The Complainant is the owner of the registered trademark "七喜" and is entitled to the prior right.
The Respondent referred "七喜" Internet Keyword to a URL<http://www.7up.com/index.html>when he registered it.
Although the URL is inaccessible, it has established relationship objectively with the "七喜" trademark.
Therefore it has misled the public and prejudiced the identification ability of related products and services on the Internet.
- The Respondent argued that the notarized evidence was collected illegally. The Panelist disagreed because the Complainant’s proxy didn’t hide his true identity or make any circumstances that were likely to cause the Respondent’s confusion during the negotiation process.
The Administrative Panel determined that the "七喜" Internet Keyword shall be transferred to the Complainant.
- As noted in the present case, Complainant was able to secure a critical piece of evidence during the hearing. That piece of evidence later became important to show bad faith. One immediate question comes to mind is "is it permissible for one party to obtain a notary to record or gather evidence without notifying the other party?" Articles 66 and 67 of the Civil Procedure Law of PRC state that such behaviors are permissible:
The evidence shall be displayed and cross-examined by the litigants at the court. Evidence involving state secrets, commercial secrets and personal secrets shall be kept confidential. Where it is necessary to display such evidence, it shall not be done in public hearing.
The people's court shall acknowledge the validity of legal acts, legal facts and documents that have been notarized through legal procedure, except those that can be overturned by counter-evidence.
- In addition, the same concept of "unclean hands" applies in this situation as Respondant could not exclude such evidence because Respondant's action was in bad faith and it was illegal in nature, so the registrant is not entitled to privacy or other protection in this context.
[B1]The US 7-up registration was filed by (REGISTRANT) SEVEN-UP COMPANY, THE CORPORATION MISSOURI 1300 DELMAR BLVD. ST. LOUIS MISSOURI; LAST LISTED OWNER: DR PEPPER/SEVEN UP, INC. CORPORATION DELAWARE 5301 LEGACY DRIVE PLANO TEXAS 75024. Taiwan’s 7-up application was also filed by this Irish company.