The Complainant is Pet Holdings Inc. of Seattle, United States of America, represented by Balasubramani & Webb of United States of America.
The Respondent is Vladimir Prudnikov of Hong Kong SAR of China.
The disputed domain name <icanhashotdog.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2009. On July 27, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On July 28, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on September 1, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On September 15, 2009 the Panel extended the due date for decision until September 21, 2009, in accordance with paragraphs 10(c) and 15(b) of the Rules.
The disputed domain name was registered on July 20, 2007 (as indicated by the ‘creation date' in the WhoIs record).
The Complainant is the owner of a registered trademark in the United States Patent and Trademark Office (registration No. 3426428) for I CAN HAS CHEEZBURGER?. The mark was registered on May 13, 2008, with a claimed first use in commerce of January 11, 2007. The mark is registered class 38 for “on-line forums for the transmission of images and messages among computer users concerning animals and humor.”
The Complainant operates a website at “icanhascheezburger.com” that allows users to upload and add captions to photos of animals, including pets. Although not clearly described in the Complaint, the services that the Complainant provides in this connection appear to be directed to advertising on its website.
At the date of this decision, and on July 17, 2009 as evidenced in the Complaint, the disputed domain name reverted to a website that generally appeared to contain similar content to the website of the Complainant. The Respondent's website relates to pets, particularly dogs, and contains various pictures, and related links.
The Complainant claims that, since the first use of its mark in January 2007, its website was getting nearly 200,000 unique visitors a month by April 2007. Its website has been featured or included in many online and print publications including Slate, Gawker, the Wall Street Journal, and Time. Since its inception it has grown steadily. Both the site and Complainant have been the recipients of numerous awards.
The Complainant claims that the disputed domain name is confusingly similar to its mark, which is reinforced by the fact that the Respondent is using it to provide a similar service. The Complainant also claims that the Respondent has no rights or legitimate interests in the disputed domain name of the kind set out in paragraph 4(c) of the Policy.
Finally, the Complainant claims that the disputed domain name has been registered and used in bad faith. At the time of registration of the disputed domain name, the Complainant's website was widely known, and its mark was being used in connection with that website. That website received significant traffic, including from the United States, as well as other countries. (The Complainant provided evidence of Internet traffic to its website, as well as printouts of newspaper articles documenting the recognition received by its website at the time of registration of the disputed domain name.)
The Complainant claims that the disputed domain name is so confusingly similar to the Complainant's mark that consumers are very likely to believe that Respondent's website is somehow affiliated with the Complainant. There are striking similarities in theme, layout, and user experience between the two websites. The basic concept behind the Respondent's website is the same as the concept behind the Complainant's website – i.e., users upload and caption humorous photographs of pets and other animals. The Complainant describes its website as “Lolcats ‘n' Funny Pictures of Cats.” The Respondent describes its website in a similar fashion: “LOL Dogs and Funny Dog Pictures.”
Additionally, the Respondent (as its website was on July 17, 2009) is advertising the disputed domain name and associated website for sale. It prominently displays, at the top of the websites's homepage, and in bold red print: “This website is for sale. Send your proposals through our contact form.” The Complainant claims that the Respondent's actions are nothing more than a thinly-veiled attempt at ransoming the Respondent's website to the Complainant.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
The Complainant clearly has rights in a mark, for the purpose of paragraph 4(a)(i) of the Policy, and 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.
Although the Complainant did not argue it, a further question arises as to whether the Complainant had a common law right in its mark at the date the disputed domain name was registered. Although unnecessary to consider for the purpose of paragraph 4(a)(i) of the Policy, given the Complainant's registered rights, it is pertinent to the issue of bad faith discussed further below. This is because the disputed domain name was registered almost a year before the Complainant registered its mark. Where a complainant has no trademark rights when a disputed domain name is registered, the consensus view of WIPO Panelists (with narrow exceptions) is that there can be no bad faith “because the registrant could not have contemplated the complainant's non-existent right” (see paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
What is required to demonstrate rights in an unregistered mark is also outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The consensus of prior panels is relevantly set out under the heading: “1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?”:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition…”
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.
The Complainant has established a prima facie case against the Respondent on this ground, which the Respondent has chosen to leave unanswered. There is nothing otherwise in the case file which suggests that the Respondent has a right or legitimate interest in the disputed domain name. In these circumstances, the Respondent's bad faith (set out below) also supports a finding that it lacks any rights or legitimate interests.
The evidence in this case leaves little doubt that the Respondent was aware of, and was seeking to exploit, the reputation of the Complainant's business when it registered the disputed domain name. The Complainant provided evidence of the rapidly escalating popularity of its website and its associated mark, from the time its website was established, around 6 months before the registration of the disputed domain name. The Panel finds both the disputed domain name, and the Respondent's associated website, to be highly similar the Complainant's. That degree of similarity makes it is almost inconceivable to the Panel that the Respondent did not have the Complainant in mind, and deliberately sought to exploit the value of the Complainant's business and brand, in selecting, and then using, the disputed domain name. In these circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <icanhashotdog.com> be transferred to the Complainant.
James A. Barker
Dated: September 21, 2009