For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Wednesday, 4 November 2009

I CAN HAS CHEEZBURGER wins against icanhashotdog.com

In a case of inherent interest to the IPKat, a WIPO panelist has transferred the domain name "icanhashotdog.com" to the proprietor of the trade mark I CAN HAS CHEEZBURGER?.

The proprietor of the trade mark I CAN HAS CHEEZBURGER?, claiming protection for “on-line forums for the transmission of images and messages among computer users concerning animals and humor" filed a URDP complaint against the registrant of the domain name icanhashotdog.com, used for, well, essentially the services claimed.

And won despite the fact that the complainant had registered its mark almost a year after the domain name icanhashotdog.com was registered (he did claim first use of the mark some months before the registration of the domain name). The panelist held that the complainant had met its burden of proof to demonstrate common law rights in the trade mark I CAN HAS CHEEZBURGER?:

"Relevantly, the Complainant’s evidence is essentially that:

- it used its I CAN HAS CHEEZBURGER? mark in a domain name from January 2007;
- it featured the mark on its website to which its domain name referred (as annexed to the Complaint, the Complainant’s homepage displays the mark once, in the upper left hand of the page);
- its website rapidly became popular;
- its website was the subject of a number of media articles (the Complaint attached copies of two).

The Panel considers that, on balance, this is enough to demonstrate that the Complainant had developed common law rights in its mark by the time that the domain name was registered in July 2007. The Complainant did not provide a substantial amount of evidence of common law rights, or explain the origin of its mark. The Complainant’s claim to the first use of its mark from January 2007 in its trademark registration also does not establish an evidentiary presumption to that effect. (See recently e.g. Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333 citing McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.)).

However the Panel considers that, in this case, the evidential burden on the Complainant to provide evidence of common law rights is relatively light. Principally, this is because its mark appears to the Panel to be an invented and arbitrary phrase, and therefore inherently distinctive in a trademark sense for the purpose of the Policy. What is “inherently distinctive” in this regard may not always be capable of a neat definition. However, it is at least to be contrasted with marks which are derived from common terms, or words which are descriptive or suggestive of certain goods and services. There is nothing in the Complainant’s mark which seems to this Panel to be descriptive or suggestive of the services which the Complainant provides. The phrase “I can has cheezburger?” appears to have no common meaning, or to be derived in whole or part from any phrase with a common meaning, including one associated with the Complainant’s services.

Since the Complainant’s mark is inherently distinctive, the Panel considers that the Complainant’s evidence is, in this case, sufficient to demonstrate that it had unregistered rights when the Respondent registered the disputed domain name. Here, the Complainant provided evidence of its close association with an inherently distinctive mark. There is no evidence in the case file that the Complainant’s mark had any other association. The Panel accordingly finds for the Complainant under the first element of the Policy."

Since the whole "lolcat" meme originated from 4chan (no, I won't link, but you all know how to find it), the IPKat wonders whether it is correct to monopolize the use of the phrase for commercial purposes by a single provider. And the IPKat is glad that he has been around since before January 2007 and is therefore much older - not necessarily more mature - than all the lolcats.

Case No. D2009-1003

7 comments:

Anonymous said...

Does it bother anyone else that the Panel does not assess whether "I CAN HAS HOTDOG" is confusingly similar to "I CAN HAS CHEEZBURGER"?

Chris H said...

It bothers me a bit too - but then the respondant did not challenge the allegation that the phrase was confusingly similar (or indeed reply at all). Perhaps the situation could have turned out differently if he had of done so?

Mark Schweizer said...

The panelist did consider the likelihood of confusion, albeit in a rather cursory fashion:

"[...]the Panel finds that the disputed domain name is confusingly similar to that mark, visually, phonetically, and in overall impression. The Complainant’s mark appears to the Panel to be a highly fanciful or arbitrary mark, which would increase the likelihood of confusion. That includes the element of the mark (“icanhas” which is exactly replicated in the disputed domain name). The disputed domain name substitutes the word “cheezburger” with “hotdog”. In combination with the same preceding words as those in the Complainant’s mark, the disputed domain name creates, in the Panel’s view, a confusing association with that mark."

First, what is a "confusing association"? Either it is a mere association, or there is a likelihood of confusion, no? Don't we generally use the term "association" to indicate that a sign evokes another sign, without actual confusion?

Secondly, if the panelist is right, does the owner of the trade mark I CAN HAS CHEEZEBURGER have an exclusive right in all signs built along the same meme, i.e. I CAN HAS plus generic term for fast food? Are I CAN HAS FRIES or I CAN HAS PIZZA or I CAN HAS FRIED CHICKEN all infringing?

Anonymous said...

I CAN HAS EXTENSION OF TIME??

Devil's Advocate said...

ICANN HAS IPRs

Lols!!1!1!

Sorry....

Stephane said...

Secondly, if the panelist is right, does the owner of the trade mark I CAN HAS CHEEZEBURGER have an exclusive right in all signs built along the same meme(...)?

That certainly appears to be the gist:

"(...)The Complainant’s mark appears to the Panel to be a highly fanciful or arbitrary mark, which would increase the likelihood of confusion. That includes the element of the mark (“icanhas” which is exactly replicated in the disputed domain name). The disputed domain name substitutes the word “cheezburger” with “hotdog”. In combination with the same preceding words as those in the Complainant’s mark, the disputed domain name creates, in the Panel’s view, a confusing association with that mark."

One wonders whether the apparent extent of protection would be limited to fastfoods indeed.

Maybe WIPO intends on passing the bukkit to a higher instance...

Anonymous said...

So, I cannot has I can has hot dog?

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