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

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Posted By Mark Schweizer to The IPKat - for IP in a changing world on
11/04/2009 09:38:00 AM