Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 107

Letter from Plaintiff and Defendant JOINT re Discovery. (Clark, Perry) (Filed on 9/2/2011)

LAW OFFICES OF

PERRY

R. CLARK

825 SAN ANTONIO ROAD
PALO ALTO, CA 94303
TELEPHONE [phone]
FACSIMILE 650 618 8533

September 2, 2011
BY ELECTRONIC FILING

Hon. Phyllis Hamilton
Oakland Courthouse
Courtroom 3 - 3rd Floor
1301 Clay Street
Oakland, CA 94612

Re:

Petronas v. GoDaddy, 09-CV-5939 PJH

Dear Judge Hamilton,
We write regarding certain discovery disputes that have arisen in this cybersquatting and
trademark case. The parties were able to resolve some discovery issues by meeting and
conferring telephonically on August 8, 2011 and exchanging correspondence thereafter. For the
remaining discovery disputes, the parties submit this joint letter based on your Honor's directions
at the May 26,2011 Case Management Conference at which the Court retained discovery (no
referral) and directed that, "ifthere is a discovery dispute, counsel should submit a joint letter brief
of dispute in a minimum amount of pages. The Courtroom Deputy will contact counsel when/if a
phone conference will be held as to a discovery issue." (Doc. No. 91).
The parties' positions on the disputes are set forth below.
Go Daddy's Response to Petronas's Document Request No.5 (Ex. A at 4:18-5:5)
Petronas 's Position

Go Daddy should be compelled to comply with Petronas's Document Request No. 5
which seeks specific information related to the ''thousands" of trademark infringement notices
Go Daddy claims to receive each year regarding the domain name services at issue in this case.
(Ex. A at 4:18-5:5). One ofGoDaddy's defenses in this case is that it did not have a "bad faith
intent to profit" from its refusal to stop providing its domain name services after receiving
Petronas' s notices of trademark infringement. The only reason Go Daddy has identified for its
refusal to act on Petronas' s trademark infringement notices is its allegation that it would be
impossible for it investigate such notices because it receives thousands of them each year.
Go Daddy, however, has refused to produce documents related to any trademark infringement

1

notices, except for the notices it received from Petronas and copies of its trademark dispute
policies, much less the supposedly "thousands" of notices it receives from other trademark owners
each year.
Go Daddy has repeatedly argued that the reason it does not investigate notices of
trademark infringement regarding its domain name services-including the notices it received
from Petronas that led to this case-is because it receives so many notices of trademark
infringement that it would be impossible to investigate any of them. As Go Daddy's counsel
represented to this Court in a hearing on September 8, 2010, "Go Daddy is put on notice of
trademark disputes, again, it happens thousands of times a year ... and it would be impossible for
it to sort through these trademark issues." (Ex. B Transcript at 24:9-25). Similarly, at another
hearing, Go Daddy's counsel represented to this Court that "I am told that over 800 times a year it
[Go Daddy] is put on notice of some sort of adversary proceeding oftrademark infringement like
the one we are talking about today ... If the Go Daddys of the world, meaning registrar internet
service providers were putin the position of policing these issue, it would have a very, very, very
significant adverse impact on their ability to do business." (Ex. C. Transcript at 9:21-10:1).
Petronas's Document Request No. 5 is narrowly tailored to obtain only the documents that
are "sufficient to show" relevant information (such as the nature of the trademark complaint, the
date, Go Daddy's response, etc.) and is expressly limited to complaints after January 1, 2008.
(Ex. A at 4: 19-26). 1 Go Daddy's response contains only boilerplate objections and offers no
justification for Go Daddy's decision to limit its response to documents "relating to disputes
involving the PETRONAS trademark that can be located after a reasonable search, as well as
documents sufficient to show the trademark policy and standard operating procedure of
Go Daddy." (Ex. A 4:27-5:3).
Cat
GoDaddy's arguments below also fail. First, although 15 U.S.C. § 1125(d) refers to a bad
faith intent to profitfrom a mark, GoDaddy bases its "safe-harbor" defense on 15 U.S.C. §
1114(D)(iii) which refers to a "bad faith intent to profit from [the] registration or maintenance of
the domain name." Second, and as GoDaddy acknowledges below, Petronas's complaint alleges
that GoDaddy had a bad faith intent to profit from refusing to investigate Petronas' s trademark
infringement notices because it intended to set a general "precedent" sparing Go Daddy the cost of
investigating others' complaints. F AC at 71-74. Because the cost of investigating other
trademark infringement complaints is relevant to Petronas' s claims in this case, Go Daddy should
be compelled to produce all of the documents requested by Petronas's Document Request No. 5.

Go Daddy's Position
This is Petronas' second attempt at demanding production of Go Daddy documents related
to complaints by other trademark owners. The Court struck Petronas' first attempt -- Document
Request No. 4 -- at the May 26, 2011 Case Management Conference. These documents sought by
Petronas are not relevant to any of the claims or defenses in the First Amended Complaint, the
demand is overly broad and unduly burdensome, and thus the Court should strike the demand
1

In fact, Petronas drafted Document Request No. 5 to incorporate the exact limitations the Court recommended at
the May 26, 2011 Case Management Conference including, among other things, limiting it to a very short time
frame, requesting only "documents sufficient to show" as opposed to "all documents," and precisely identifying the
categories of information sought.

2

once again. As Go Daddy explained in an e-mail message to Petronas' counsel dated July 6,
2011:
1.
The statute on which plaintiff is relying, 15 USC § 1125(d), requires a
showing that Go Daddy acted with bad faith intent to profit from P etronas'
trademark. It does not speak to Go Daddy's general intent or Go Daddy's intent
with respect to others' trademarks.
2.
The First Amended Complaint does not allege that the two disputed
domain names were treated differently than others registered with Go Daddy;
rather, it alleges that complaints about the disputed domain names were treated in
the same manner as others, that this treatment is '"crucial,' 'central," and/or 'core'
to [Go Daddy's] business," and that continuing such treatment with the disputed
domain names would set a general "precedent" sparing Go Daddy the cost of
investigating others' complaints. FAC at 71-74. Go Daddy is already in the
process of providing documents and information concerning the disputed domain
names. Go Daddy will also make available a 30(b)( 6) witness, as appropriate, to
discuss the company's trademark policy and how/whether the domain names were
treated within it. If it turns out that Go Daddy somehow deviated from its standard
policy when responding to plaintiff's complaints - which by all indications it did
not- only then would it make sense to benchmark Go Daddy's response against its
actions in other, illustrative situations.
Indeed, the statute on which Petronas is basing its claims could not be more clear: "A person shall
be liable in a civil action by the owner of a mark ... if, without regard to the goods or services of
the parties, that person ... has a bad faith intent to profit from that mark ...." 15. U.S. C.§ 1125(d)
(emphasis added). It does not contemplate Go Daddy's intent with respect to other trademarks.
Solid Host, NL v. Namecheap, Inc., 652 F.Supp.2d 1092, 1110 (C.D. Cal. 2009) ("The bad faith
required to support a cybersquatting claim is not general bad faith, but 'a bad faith intent to profit
from the mark'") (emphasis in original) 2 ; see also, Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93,
107 (2d Cir. 2010) (no liability for contributory trademark infringement where eBay's
generalized knowledge of infringement of on its website was insufficient to impose upon eBay
an affirmative duty to remedy a specific problem).
Go Daddy has over 40 million domain names under its supervision. In connection with its
defense of this lawsuit the company has searched nearly 90 million e-mails, and to date it has
produced to Petronas approximately 2400 pages of documents. The documents relate to the two
disputed domain names and to Go Daddy's general policies and procedures for responding to
incoming trademark complaints. Go Daddy's July 6 offer to make available a 30(b)(6) witness to
discuss general policies and procedures, the volume of incoming trademark complaints as well as
the specific handling of the two disputed domain names still stands. There is no basis, however,
for compelling Go Daddy to gather, review and produce responses to other trademark complaints,
particularly where, as here, Go Daddy receives nearly a thousand such complaints a year, the
documents do not bear on the specific issues in this dispute, the documents are confidential, and
2

The statutory language is equally clear with respect to the registrar's safe harbor (15 U.S.C. § 1114(D)(iii)), which
likewise refers to bad faith intent to profit from "the domain name" (emphasis added).

3

the number of documents is substantial. Accordingly, the objections to Document Request No.5
are well founded and should be sustained.
Go Daddy's Responses to Petronas's Interrogatory Nos. 2, 3, 4, 5, 6, and 8 (Ex. D. at 5:23-11:11-

112
Petronas 's Position
Petronas seeks an order compelling Go Daddy to provide complete responses to
Petronas's Interrogatory Nos. 2, 3, 4, 5, 6, and 8, which seek information about the existence and
description of documents containing information potentially relevant to this case. (Ex. D. at 5:2311: ll-17)._In particular, Interrogatory Nos. 2, 3, 4, 5, and 6 are directed to the documents
Go Daddy identified in its Fed. R. Civ. P. 26(a)(l)(A)(ii) initial disclosures as documents it "may
use to support its claims or defenses." (Ex. Eat 3:24-4:5). Interrogatory No.8 is directed to
documents related to the notices of trademark infringement Go Daddy claims to have received
(discussed above). Petronas sought this information in order to narrowly tailor its document
requests to relevant documents and to avoid the production of numerous, irrelevant documents by
Go Daddy. The information requested by Petronas's interrogatories is specifically identified as
discoverable in Fed R. Civ. P. 26(b)( 1), which provides that "parties may seek discovery
regarding any nonprivileged matter that is relevant to a party's claim or defense, including the
existence, description, nature, custody, condition and location ofany documents or other tangible
things . .. "(emphasis added).
Go Daddy refused to provide any response to Interrogatory Nos. 4, 5, and 8 and instead
interposed boilerplate, unsupported objections. For the others (Nos. 2, 3, and 6), Go Daddy stated
only that documents "exist in electronic form on Go Daddy's servers," which is tantamount to
providing no answer at all. As such, Petronas requests that Go Daddy be compelled to provide
complete responses to Interrogatory Nos. 2, 3, 4, 5, 6, and 8.

Go Daddy's Position
It remains unclear what additional information Petronas could be seeking with respect to
Go Daddy's documents and on what basis it is entitled to any further information. As set forth
above, Go Daddy has produced approximately 2400 pages of relevant documents to Petronas. Go
Daddy is not withholding other responsive documents, nor has it delivered unnecessary or
irrelevant documents. Moreover, at Petronas' request, on June 29, 2011 Go Daddy provided
Supplemental Initial Disclosures with identification of witnesses and descriptions by category and
location of the documents it may use to support its defenses. Exhibit F.
In many instances, Go Daddy has not waited for an appropriate document request from
Petronas, and has simply provided documents on topics related to the two disputed domain names,
agreements relevant to the two disputed domain names, registration and forwarding services
generally, among others. Many of the interrogatories request information about documents that
are outrageously overbroad and unrelated to this action (such as documents related to registration
ofwebsites generally and all customer accounts (Interrogatory No. 3), or documents regarding Go
Daddy's website generally and domain name registration process in general (Interrogatory
No.5)).
4

Setting aside the clearly overbroad categories of documents, all that is left here is
tantamount to a request for Go Daddy to describe the documents it has already produced to
Petronas; this request is well beyond what is required in the Federal Rules.
Go Daddy has produced documents that address each of the relevant and proper subjects
identified in the interrogatories, and those documents speak for themselves. In particular, for
Interrogatory No. 2- regarding the registration and hosting of the two disputed domain names Go Daddy has responded that, as Petronas was aware, Go Daddy did not provide hosting services
for the domain names, and Go Daddy produced all account information available on its servers
regarding registration of the two domain names. For Interrogatory No.4- regarding contracts
and agreements - Go Daddy has produced all contracts and agreements related to the disputed
domain names. For Interrogatory No.6 -regarding communications between plaintiff's counsel
and Go Daddy- Go Daddy has searched its entire universe of nearly 90 million emails, and has
produced all such communications. For Interrogatory No.7 -regarding Go Daddy's intent with
respect to the disputed domain names - Go Daddy responded that its intent was to provide (and it
did provide) registrar services with respect to the domain names. The documents already
provided to Petronas demonstrate that Go Daddy provided such registrar services, and only such
registrar services. Even for the overbroad requests referenced above (Interrogatory Nos. 3 and 5),
Go Daddy has produced documents in these categories as they relate to the disputed domain
names, as well as documents from its website that explain or assist with domain name registration,
routing, and forwarding
Interrogatory No. 8 seeks details concerning third-party trademark complaints submitted to
Go Daddy. Go Daddy's objections to this demand are discussed in detail above.
Under these circumstances, there is no basis to compel further responses from Go Daddy
to these Interrogatories.
Petronas' Document Collection in Response to Go Daddy's Discovery Demands

Go Daddy's Position
Petronas' document production begs serious questions about the thoroughness and
sufficiency of its collection efforts. Go Daddy respectfully requests that the Court direct Petronas
to produce all responsive documents, including e-mails and other electronic documents, no later
than September 8, 2011, which is one week before the scheduled 30(b)(6) deposition ofPetronas
in Palo Alto.
According to published reports, Petronas is a Fortune 500 company with nearly 40,000
employees. Its website boasts that Petronas is a leader in harnessing technology to advance its
business. In this lawsuit Go Daddy has served on Petronas a number of document demands
(copies of which are attached as Exhibit G (June 17, 2011 N.D.C.A.) and Exhibit H
(November 23,2010 (U.S.P.T.O. Trademark Trial and Appeal Board). These 31 document
demands address Petronas' U.S. sale of a wide variety of goods and services under the
PETRONAS trademark (in connection with Go Daddy's counterclaim for cancellation of

5

EXHIBIT A

EXHIBIT B

PAGES 1 - 35
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
BEFORE THE HONORABLE PHYLLIS J. HAMILTON, JUDGE
PETROLIUM NASIONAL BERHAD,
PLAINTIFF,

)
)
)
)

)
VS.
)
)
GODADDY.COM, INC.
)
)
DEFENDANT.
)
____________________________)

NO. C-09-5939 PJH

WEDNESDAY, SEPTEMBER 8, 2010
OAKLAND, CALIFORNIA

REPORTER'S TRANSCRIPT OF PROCEEDINGS
APPEARANCES:
FOR PLAINTIFF:
BY:

FOR DEFENDANT:
BY:

REPORTED BY:

LAW OFFICE OF PERRY R. CLARK
3457 COWPER STREET
PALO ALTO, CALIFORNIA 94306
PERRY R. CLARK, ESQUIRE

WILSON, SONSINI GOODRICH & ROS
650 PAGE MILL ROAD
PALO ALTO, CALIFORNIA 94304
JOHN L. SLAFSKY, ESQUIRE
HOLLIS BETH HIRE, ESQUIRE

DIANE E. SKILLMAN, CSR 4909, RPR, FCRR
OFFICIAL COURT REPORTER

DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC [phone]

24

1

INDICATES THAT HIS CLIENT FILLED OUT ALL THE FORMS NECESSARY

2

AND GODADDY DECIDED THAT IT WASN'T GOING TO INVESTIGATE OR TAKE

3

ANY ACTION WITH REGARD TO THEIR CLAIM.

4

MR. SLAFSKY:

SURE.

AND STEPPING BACK ONE SECOND.

5

SO THE STANDARD CONTRACT THAT GODADDY HAS WITH ITS CUSTOMERS,

6

ITS REGISTRANTS INCLUDES REPRESENTATIONS AND WARRANTIES BY THE

7

CUSTOMER THAT THEY WILL NOT USE THE DOMAIN NAME FOR INFRINGING

8

OR ILLEGAL PURPOSES.

THAT'S THE STARTING POINT.

9

WHEN GODADDY IS PUT ON NOTICE OF TRADEMARK DISPUTES,

10

AGAIN, IT HAPPENS THOUSANDS OF TIMES A YEAR
_____________________________________________________ AND IT MAKES A FORM

11

AVAILABLE FOR TRADEMARK OWNERS TO CALL THESE ISSUE TO ITS

12

ATTENTION.

13

REGISTRANT CANNOT THEN TRANSFER IT TO A THIRD PARTY AND EVADE

14

DUE PROCESS, FOR EXAMPLE, AND IT WILL COMMUNICATE PROMPTLY TO

15

THE TRADEMARK OWNER, AS IT DID IN THIS CASE, THAT THERE ARE

16

VARIOUS OPTIONS AVAILABLE TO THE TRADEMARK OWNER.

17

TRADEMARK OWNER CAN BRING A UDRP PROCEEDING, THAT'S TYPICALLY

18

WHAT HAPPENS.

19

AGAINST THE REGISTRANT, THE INFRINGER.

20

SECOND SCENARIO, AND GODADDY COMMUNICATES TO TRADEMARK OWNERS

21

THAT FOR REASONS WE HAVE ALLUDED TO EARLIER, IT CANNOT BE JUDGE

22

OR JURY IN THIS TYPE OF DISPUTE.

23

FACT-INTENSIVE ANALYSIS INVOLVING INTERNATIONAL LAW, IN MANY

24

CASES, AND IT WOULD BE IMPOSSIBLE FOR IT TO SORT THROUGH THESE
__________________________________________________________________

25

TRADEMARK MESSES.
___________________

IT WILL LOCK THE DOMAIN NAME UP SO THAT THE

THE

THE TRADEMARK OWNER CAN FILE A LAWSUIT IN COURT
THAT'S PROBABLY THE

IT'S A MULTIFACETED

DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC [phone]

EXHIBIT C

PAGES 1 - 18
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
BEFORE THE HONORABLE PHYLLIS J. HAMILTON, JUDGE
PETROLIAM NASIONAL BERHAD,
PLAINTIFF,

)
)
)
)

)
VS.
)
)
GO DADDY.COM,
)
)
DEFENDANT.
)
____________________________)

NO. C-09-5939 PJH

WEDNESDAY, DECEMBER 23, 2009
OAKLAND, CALIFORNIA

REPORTER'S TRANSCRIPT OF PROCEEDINGS
APPEARANCES:
FOR PLAINTIFF:
BY:

FOR DEFENDANT:

BY:

REPORTED BY:

KIRKLAND & ELLIS
950 PAGE MILL ROAD
PALO ALTO, CALIFORNIA 94303
PERRY R. CLARK, ESQUIRE

WILSON, SONSINI, GOODRICH & RO
GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CALIFORNIA 94304
JOHN L. SLAFSKY, ESQUIRE
HOLLIS BETH HIRE, ESQUIRE
DAVID KRAMER, ESQUIRE
DIANE E. SKILLMAN, CSR 4909, RPR, FCRR
OFFICIAL COURT REPORTER

DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC [phone]

9

1

AND I DON'T KNOW WHAT THE TERMINOLOGY DE-REGISTERED CERTAIN

2

DOMAIN NAMES BECAUSE OF ALLEGATIONS OF INFRINGEMENT?
MR. SLAFSKY:

3
4

LET ME SEE IF I CAN SUMMARIZE FOR THE

COURT, YOUR HONOR.

5

GO DADDY HAS OVER 37 MILLION DOMAIN NAMES UNDER ITS

6

MANAGEMENT.

7

PUT ON NOTICE OF SOME SORT OF ADVERSARY PROCEEDING INVOLVING
_________________________________________________________________________

8

ALLEGATIONS OF TRADEMARK INFRINGEMENT LIKE THE ONES WE ARE
______________________________________________________________________

9

TALKING ABOUT TODAY.
________________________

10

AND I AM TOLD THAT OVER 800 TIMES A YEAR, IT IS
____________________________________________________

ITS POLICY, AS A GENERAL MATTER, WHICH REFLECTS THE

11

VERY WELL-ESTABLISHED LAW IN THIS AREA, IS THAT IT DOES NOT

12

WANT TO BE JUDGE OR JURY, IT'S NOT CAPABLE OF BEING JUDGE OR

13

JURY TO ASSESS TRADEMARK INFRINGEMENT CLAIMS.

14

THEM.

15

IT STAYS OUT OF

IT DOES HAVE AN ABUSE POLICY FOR THE MOST EGREGIOUS,

16

EXCEPTIONAL SITUATIONS INVOLVING SPAM AND CHILD PORNOGRAPHY,

17

AND THINGS LIKE THAT, WHERE IN EXCEPTIONAL SITUATIONS IT WILL

18

TAKE ACTION, BUT IT TRIES TO BE AS CONSISTENT AS POSSIBLE TO

19

AVOID GETTING INVOLVED IN THE MANNER THAT PLAINTIFF IS SEEKING

20

GO DADDY TO GET INVOLVED TODAY.

21

THAT POLICY MAKES SENSE AS A BUSINESS MATTER.

IT

22

MAKES SENSE AS A MATTER OF PUBLIC POLICY. _________________________
IF THE GO DADDY'S OF

23

THE WORLD DEMEANING REGISTRAR INTERNET SERVICE PROVIDERS WERE
__________________________________________________________________________

24

PUT IN THE POSITION OF POLICING THESE ISSUES, IT WOULD HAVE A
___________________________________________________________________________

25

____________________________________________________________________________
VERY, VERY, VERY SIGNIFICANT ADVERSE IMPACT ON THEIR ABILITY TO

DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC [phone]

10

1

DO BUSINESS.
______________

2

THE COURT:

BUT --

3

MR. SLAFSKY:

I WANT TO POINT OUT, YOUR HONOR, FIRST

4

OF ALL, I THINK COUNSEL HAS MISCHARACTERIZED THE LOCKHEED

5

DECISION, AND I WOULD RESPECTFULLY REQUEST --

6
7
8
9

THE COURT:

BEFORE WE GET TO THAT, I WANT TO HAVE A

CLEAR UNDERSTANDING OF THE PROCESS.
COUNSEL HAS REFERRED TO THE FACT THAT HIS CLIENT
FOLLOWED THE PROCEDURE.

CAN YOU DESCRIBE WHAT THE PROCEDURE IS

10

IN ABUSE SITUATIONS WHICH I ASSUME IS WHAT WE HAVE HERE.

11

CLIENT -- AND WHAT IS YOUR CLIENT'S RESPONSE TO THOSE

12

PROCEDURES?

13

MR. SLAFSKY:

YOUR

SO VERY GENERALLY SPEAKING, THE CLIENT

14

HAS A PROCEDURE WHERE IT PUBLICIZES AN E-MAIL ADDRESS AND PHONE

15

NUMBER FOR PEOPLE TO CALL ATTENTION TO PROBLEMS, AN ABUSE

16

DEPARTMENT.

17

WHO REVIEW INCOMING COMPLAINTS.

18

THERE IS A TEAM OF PEOPLE WHO WORK AT THE COMPANY

THEY CATEGORIZE THESE COMPLAINTS INTO DIFFERENT

19

CATEGORIES.

THIS TYPE OF DISPUTE FALLS INTO, FRANKLY, A FAIRLY

20

COMMON CATEGORY OF A TRADEMARK DISPUTE, AND GO DADDY'S POLICY

21

IN THIS TYPE OF CASE IS TO NOTIFY THE TRADEMARK OWNER THAT IT

22

OR HE OR SHE SHOULD BE PURSUING THE BAD ACTOR, WHICH IN THIS

23

CASE IS THE DOMAIN NAME OWNER.

24

STATES, THE TRADEMARK OWNER CAN SUE THE DOMAIN NAME REGISTRANT

25

OR IF IT IS HAVING A DIFFICULT TIME TRACKING THAT PERSON DOWN

UNDER THE LAW IN THE UNITED

DIANE E. SKILLMAN, OFFICIAL COURT REPORTER, USDC [phone]

EXHIBIT D

EXHIBIT E

EXHIBIT F

EXHIBIT G

EXHIBIT H