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Mimicking Trademark by Appropriating Its Dominant Syllabic Elements

It is not necessary for a string of syllables to make sense to obtain a trademark registration. Indeed, the least sense syllables make the more obvious its appropriation. In this respect a string of nonsense is no different from any other arbitrary sign, which under trademark law is given the highest protection. Invented nonsense does not have to make logical sense to convey a humorous meaning even if it remains unintelligible to outsiders. Pet Holdings Inc. is the registered holder of the Jabberwockyesque trademark I CAN HAS CHEEZBURGER. The Respondent in Pet Holdings Inc. v. Vladimir Prudnikov, D2009-1003 (WIPO September 21, 2009) repeats the dominant syllables of the Complainant’s trademark in registering <icanhashotdog.com>, except he exchanges “hotdog” for “cheezburger.” This is comparable to adding suffixes to brand names, of which there are numerous examples in the repertory. The confusion in similarity and ultimately to the consuming public is localized on the syllables that make the trademark distinctive.

The Respondent in Pet Holdings did not appear in the proceedings, denying readers the pleasure of his explanation. The record, however, indicates that the Respondent registered the disputed domain name prior to the Complainant receiving its certificate of trademark registration, a factor in the Respondent’s favor, but after the trademark’s first use in commerce, a factor undermining the Respondent’s good faith. In the absence of evidence to the contrary, where distinctive trademarks are the object of copying, the Respondent can have no right or legitimate interest in the disputed domain name. However, in order to prevail where there is a timing issue the Complainant must demonstrate that its trademark has acquired secondary meaning. The Panel explained that the “the evidential burden on the Complainant to provide evidence of common law rights is relatively light.” The reason for this is that the Complainant’s

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…. [Moreover, ] [t]here 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.

The conclusion that the disputed domain name is confusingly similar to the Complainant’s trademark means that for as long as the Complainant trades it will have a monopoly on the nonsense syllables “I Can Has.” As a general rule, where no suffix can create a distinctive new name that is not suggestive of the complainant’s trademark the complainant must prevail. In this respect, “I Can Has” is lifted into the class of famous brands. It is inimitable; flattering as imitation is said to be, but Respondent’s “hot dog” is infringing nevertheless.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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