April 28, 2005

Domain name dispute over the Chinese translation of Pepsi

In June 2002, PepsiCo, Inc. filed a complaint against Qing Jia Yuan Science & Technology Industry Co., Ltd. with the China International Economic and Trade Arbitration Commission Domain Name Dispute Resolution Center, requesting that QJY transfer the Chinese domain name "Bai Shi Ke Le" to them (the source does not indicate with which TLD the name was registered). Bai Shi Ke Le means Pepsi Cola in Chinese.
Pepsi claimed that it had registered both the Chinese trademark "Bai Shi Ke Le" and "Bai Shi" in China. Moreover, its trademarks were deemed so famous that they were included in the "Important Trademarks Protection List of China" in April 1999 and June 2000. However, in August 2001, QJY registered the Chinese domain name "Bai Shi Ke Le", which is identical to Pepsi's trademark. As a result, Pepsi felt it was likely to cause confusion among consumers, which could in turn harm Pepsi's standing. Moreover, they alleged that QJY had acted in bad faith, seeking to purposely mislead consumers into thinking that QJY was connected to Pepsi in some way.
Pepsi also brought forth evidence showing that QJY had once contacted them seeking RMB 500,000 (US$ 60,532) for rights to the domain name. Pepsi argued that this clearly indicated QJY's registration of the domain name was an act made in bad faith and was done purely for extracting money from Pepsi.
The case was ruled in favor of Pepsi. The DNDRC expert agreed that as Pepsi had registered the trademark "Bai Shi" and "Bai Shi Ke Le" in China, it was thus entitled to exclusive rights over use of the trademark. Secondly, given the fact that QJY's domain name was identical to that of Pepsi's trademark, it was likely to cause confusion. Thirdly, as QJY had not attempted to respond in any way to the charges against it, this could be taken as an admission of fault. Finally, he found that being a company in the business of information technology, it was impossible for QJY to have not known of Pepsi's trademark. QJY has to transfer the domain name to Pepsi.

[From Rouse & co.]

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