Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 111

MOTION to File Amicus Curiae Brief In Support of 112 Motion For Summary Judgment filed by eNom, Inc.. Responses due by 11/16/2011. Replies due by 11/23/2011. (Attachments: # 1 Proposed Order)(Ballon, Ian) (Filed on 11/2/2011) Modified on 11/3/2011 (vlk, COURT STAFF).

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GREENBERG TRAURIG, LLP
IAN BALLON (SBN 141819)
LORI CHANG (SBN 228142)
2450 Colorado Avenue, Suite 400E
Santa Monica, California 90404
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]; [e-mail]

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Attorneys for Amicus Curiae
ENOM, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA
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OAKLAND DIVISION

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PETROLIAM NASIONAL BERHAD
(“PETRONAS”)
Plaintiff,

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vs.
GODADDY.COM, INC.

CASE NO. C09-5939 PJH (JCS)
MOTION FOR LEAVE TO FILE BRIEF
OF AMICUS CURIAE ENOM, INC. IN
SUPPORT OF DEFENDANT
GODADDY.COM, INC.’S MOTION FOR
SUMMARY JUDGMENT

Defendant(s).

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MOTION FOR LEAVE TO FILE BRIEF OF AMICUS CURIAE ENOM, INC.

1 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
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PLEASE TAKE NOTICE THAT eNom, Inc. (“eNom”) hereby moves the Court for permission

3 to appear and file the amicus curiae brief tendered with this motion and attached hereto as Addendum A.
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Courts have liberally exercised their broad discretion to permit a non-party to participate in an

5 action as amicus curiae. See Woodfin Suite Hotels, LLC v. City of Emeryville, No. C 06-1254 SBA,
6 2007 WL 81911, at *3 (N.D. Cal. Jan. 9, 2007) (granting motion for lave to file brief by amici curiae;
7 stating “[w]hether to allow Amici to file a brief is solely within the Court’s discretion, and generally
8 courts have ‘exercised great liberality . . . [t]here are no strict prerequisites that must be established prior
9 to qualifying for amicus status; an individual seeking to appear as amicus must merely make a showing
10 that his participation is useful or otherwise desirable to the court.’”) (quoting In re Roxford Foods Litig.,
11 790 F. Supp. 987, 997 (E.D. Cal. 1991)); Sonoma Falls Developers, LLC v. Nevada Gold & Casinos,
12 Inc., 272 F. Supp. 2d 919, 925 (N.D. Cal. 2003) (“District courts frequently welcome amicus briefs from
13 non-parties concerning legal issues that have potential ramifications beyond the parties directly involved
14 or if the amicus has ‘unique information or perspective that can help the court beyond the help that the
15 lawyers for the parties are able to provide.’”) (quoting Cobell v. Norton, 246 F Supp 2d 59, 62 (D. D.C.
16 2003); Natural Resources Defense Council v. Evans, 243 F. Supp. 2d 1046, 1047 (N.D. Cal. 2003)
17 (“Amici . . .may file briefs and may possibly participate in oral argument”).
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eNom is one of the world’s leading domain name registrars accredited by ICANN. eNom

19 provides domain name registration and maintenance services similar to those provided by defendant
20 GoDaddy.com, Inc. (“GoDaddy”), and therefore is interested in the outcome of this case. Accordingly,
21 the Court should permit eNom to appear as amicus curiae and file its proposed brief in support of
22 GoDaddy’s motion for summary judgment. See Sonoma Falls Developers, 272 F. Supp. 2d at 925
23 (granting amicus curiae leave to file a brief where the court found that it had was involved in the events
24 leading to the case and had interests in the contracts at issue).
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MOTION FOR LEAVE TO FILE BRIEF OF AMICUS CURIAE ENOM, INC.

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Respectfully submitted,

2 DATED: November 2, 2011

GREENBERG TRAURIG, LLP

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By s/IanCBallon/
IAN C. BALLON
Attorneys for eNom, Inc.

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MOTION FOR LEAVE TO FILE BRIEF OF AMICUS CURIAE ENOM, INC.

Addendum A

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GREENBERG TRAURIG, LLP
IAN BALLON (SBN 141819)
LORI CHANG (SBN 228142)
2450 Colorado Avenue, Suite 400E
Santa Monica, California 90404
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]; [e-mail]

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Attorneys for Amicus Curiae
ENOM, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA
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OAKLAND DIVISION

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PETROLIAM NASIONAL BERHAD
(“PETRONAS”)
Plaintiff,

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CASE NO. C09-5939 PJH (JCS)
BRIEF FOR AMICUS CURIAE ENOM,
INC.

vs.
GODADDY.COM, INC.
Defendant(s).

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BRIEF FOR AMICUS CURIAE ENOM, INC.

1 I.

INTRODUCTION AND STATEMENT OF AMICUS CURIAE

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eNom, Inc. (“eNom”) seeks leave to file an amicus brief in this case to address an issue of great

3 importance to all domain name registrars and registries—and ultimately to brand owners as well. eNom
4 is the second largest ICANN accredited domain name registrar that provides domain name registration
5 and related services. The process is fast, simple and relatively inexpensive. A central part of registering
6 a domain name is logically associating the domain name with a location on the Internet so that the
7 domain name resolves to a website, rather than generating an error message. Brand owners commonly
8 register multiple domain names that, through the use of a domain name forwarding service, may resolve
9 to separate locations or to a single location. Domain name forwarding allows brand owners to deter
10 cybersquatting by registering different variations of their marks without having to set up different
11 websites for each name or generating error messages that may discourage users who are trying to locate
12 a website by guessing its address based on the site owner’s marks. Domain name forwarding is a
13 standard feature provided by eNom, GoDaddy and most other registrars.

Treating domain name

14 forwarding services as different from other registration services, or requiring advance screening, would
15 run counter to the policy objectives of the Anti-Cybersquatting Consumer Protection Act (“ACPA”) and
16 controlling Ninth Circuit precedent, and would impose the type of policing functions on registrars that
17 both Congress and courts in this Circuit have concluded would be impractical and unreasonable (and
18 would ultimately slow down and make substantially more expensive the process of registering domain
19 names).
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Congress, in enacting the ACPA, sought to compel trademark owners to resolve disputes through

21 direct litigation against cybersquatters or dispute resolution procedures (such as ICANN’s Uniform
22 Dispute Resolution Procedure (“UDRP”)), rather than suits against registrars or registries. The plaintiff
23 in this case in fact successfully obtained the domain name registrations at issue through an in rem action
24 under the ACPA. By contrast, the ACPA provides broad immunity to registrars (and registries) for
25 refusing to register, remove or disable a domain name in compliance with a court order or in
26 implementing a reasonable policy prohibiting the registration of infringing marks; and limited liability
27 to only the narrow circumstances in which “bad faith intent to profit from such registration or
28 maintenance of the domain name” is proven. 15 U.S.C. § 1114(2)(D)(i) & (iii). The act of registering
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BRIEF FOR AMICUS CURIAE ENOM, INC.

1 domain names, including allowing those names to resolve to websites (whether new ones or preexisting
2 locations to which a domain name is forwarded), does not and cannot in and of itself support a finding
3 of bad faith under the ACPA or otherwise serve as the basis for finding a domain name registrar liable
4 for any misconduct by third party users. Indeed, the ACPA makes clear that “[a] person shall be liable
5 for using a domain name [with the bad faith intent to profit from another’s trademark] . . . only if that
6 person is the domain name registrant or that registrant’s authorized licensee.”

15 U.S.C. §§

7 1125(d)(1)(A) & (D) (italics added). By its terms, the ACPA does not authorize the imposition of
8 liability on registrars such as GoDaddy and neither does Lanham Act case law.
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This Court should decline plaintiff’s invitation to expand the scope of liability for cybersquatting

10 beyond what Congress and the Ninth Circuit intended by parsing through the process employed by
11 legitimate domain name registrars for registering domain names to determine if any of these neutral
12 functions should form the basis for liability. To do otherwise would alter the careful balance created by
13 Congress and the courts and substantially disrupt registration services to the public, likely slowing down
14 and increasing the cost of registration for trademark owners such as the plaintiff and other Internet users.
15 II.

ARGUMENT

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A.

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Domain Name Registrars Are Intermediaries That Perform Neutral Functions On
Behalf Of Registrants

GoDaddy and eNom are among nearly one thousand domain name registrars accredited by

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19 ICANN.1 “ICANN is a private not-for-profit corporation that coordinates the Internet domain name
20 system (‘DNS’) on behalf of the United States Department of Commerce (‘DOC’).” Coalition for
21 ICANN Transparency Inc. v. Verisign, Inc., 464 F. Supp. 2d 948, 951 (N.D. Cal. 2006).2 The DNS, in
22 turn, operates through a registration system, and a domain name exists and is created by virtue of its
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A full list of ICANN-accredited registrars is available on its website at
http://www.icann.org/en/registrars/accredited-list.html. As shown on ICANN’s website, there are
currently 995 accredited registrars, over half of which are located in the United States.
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“Every computer connected to the Internet has a unique Internet Protocol (‘IP’) address” which
comprises a “long string[] of numbers, such as 64.233.161.147.” Id. at 951-2. A domain name is an
“alphanumeric shorthand for [an] IP address.” Id. at 952. A domain name contains at least two parts, a
top-level domain (“TLD”) (i.e., the domain to the right of the first period, e.g., “.com”) and a secondlevel domain (i.e., the domain to the left of the first period, e.g., “enom” in “enom.com”). See id. “Each
domain name is unique and thus can only be registered to one entity.” Id.
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1 registration “with the appropriate registry operator.” See id. at 952. “A registry operator maintains the
2 definitive database, or registry, that associates the registered domain names with the proper IP numbers
3 for the respective domain name servers,” which “direct Internet queries to the related web resources.”
4 Id. “A registrant can register a domain name only through companies that serve as registrars for second
5 level domain names.” Id. “Registrars accept registrations for new or expiring domain names, connect
6 to the appropriate registry operator’s TLD servers to determine whether the name is available, and
7 register available domain names on behalf of registrants.”

Id.

In this regard, registrars are

8 intermediaries of the DNS that process registrations and maintain domain names on behalf of
9 registrants.
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ICANN accredited registrars require registrants to consent to online arbitration through the

11 UDRP, which has been very successful in helping trademark owners quickly and easily resolve domain
12 name disputes. See Ian C. Ballon, E-Commerce and Internet Law: Treatise with Forms 2d Edition §
13 7.05 (West 2d ed. 2011). Registration services are neutral and were never intended by Congress to be
14 actionable. For example, in describing the services of Network Solutions (“NSI”), one of the largest
15 domain name registrars, the Ninth Circuit explained that the “applicant submits NSI’s ‘template’
16 electronically over the Internet,” and when the domain name application is approved (after NSI
17 performs a “conflicts check” by comparing the requested domain name to all registered names), “NSI
18 puts the domain-name combination in its database in conjunction with the correct IP Address,” and
19 “then routes Internet users who enter a certain domain-name combination to the registrant’s computer.”
20 Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 982 (9th Cir. 1999). All of this is
21 performed with little (if any) human intervention by NSI. See id. As analogized by the Ninth Circuit in
22 Lockheed, a registrar functions much in the same as the U.S. Postal Service:
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NSI’s role differs little from that of the United States Postal Service:
when an Internet user enters a domain-name combination, NSI translates
the domain-name combination to the registrant’s IP Address and routes the
information or command to the corresponding computer. Although NSI’s
routing service is only available to a registrant who has paid NSI’s fee,
NSI does not supply the domain-name combination any more than the
Postal Service supplies a street address by performing the routine service
of routing mail.

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1 Id. at 984-85. Much in the same way that the U.S. Postal Service offers mail forwarding services on its
2 website for a fee of $1.00 (see Postal Service website at https://moversguide.usps.com/icoa/icoa-main3 flow.do?execution=e1s4), registrars such as eNom typically provide domain name forwarding as a free
4 service to registrants who choose to point domain name registrations to existing websites, rather than
5 create new ones.3 However, it is irrelevant whether domain name forwarding is offered free of charge
6 or for an additional fee because it is a neutral tool intended for lawful purposes. Domain name
7 forwarding does not promote infringement any more so than any other aspect of domain name
8 registration service which, by definition, allows users to logically associate domain name registrations
9 with Internet websites, whether new or preexisting.
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eNom, GoDaddy and many other registrars operate in the same manner. They provide tools to

11 trademark owners and other users to quickly, automatically and inexpensively register domain names,
12 facilitating the development of e-commerce.4 Significantly, registrars do not monitor the activities of
13 registrants or their subsequent use of the domain names, including the use of a domain name forwarding
14 service, and play no role in maintaining the websites associated with the domain names. See Lockheed,
15 194 F.3d at 982; Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 962 (C.D. Cal.
16 1997), aff’d, 194 F.3d 980 (9th Cir. 1999) (“NSI neither controls nor monitors the Internet. A domain
17 name, once registered, can be used in connection with thousands of pages of constantly changing
18 information. . . . [And] NSI cannot reasonably be expected to monitor the Internet.”). Nor did Congress
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For trademark owners, this utility provides added value to e-commerce and deters cybersquatting by
encouraging owners to register a variety of domain names (and exclude them from registration by
potential squatters) and enabling them to point the domains to a primary website, rather than multiple
websites, or none at all (which could cause users to become discouraged and not search further for a
brand owner’s main site.
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To set up domain forwarding, the registrant provides information akin to filling out a “Change Of
Address” form with the Postal Service (available online at https://moversguide.usps.com/icoa/icoamain-flow.do?execution=e1s4) to forward mail from an old address to a new address. In both instances,
the registrar and Postal Service performs limited “checking” or verification of the request. eNom, for
instance, only checks that the request is being made by the authorized registrant, and does not
investigate the circumstances of the new IP address. Similarly, when a “Change of Address” request is
made online, the U.S. Postal Service verifies the request by matching an address with its database of
U.S. addresses (to correct for zip code or other errors) and make sure it matches the user’s credit card
billing address.
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BRIEF FOR AMICUS CURIAE ENOM, INC.

1 believe that they could or should be required to do so. See S. Rep. No. 106-140, 1999 WL 594571, at *4
2 & *11.
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B.

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There is a clear statutory immunity provided to domain name registrars and registries that applies

The ACPA Provides Broad Exemption To Domain Name Registrars

5 broadly to claims arising under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C.
6 § 1125(d), as confirmed by congressional intent and Ninth Circuit precedent. When Congress enacted
7 the ACPA in 1999, it created a cause of action based on the bad faith use of, registration or trafficking in
8 domain names with intent to profit from the trademarks of another, to combat cybersquatting, but at the
9 same time made explicit that such a claim could not be brought against registrars or registries by
10 unequivocally providing that only a “domain name registrant or that registrant’s authorized licensee”
11 may be held liable for use of a domain name with the requisite bad faith. 15 U.S.C. §§ 1125(d)(1)(A) &
12 (D) (italics added). The Act further created an exemption for domain name registrars and registries by
13 providing that:
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A domain name registrar, a domain registry, or other domain name
registration authority shall not be liable for damages under this section for
the registration or maintenance of a domain name for another absent a
showing of bad faith intent to profit from such registration or maintenance
of the domain name.
15 U.S.C. § 1114(2)(D)(iii). In addition, under the Act, registrars and registries may not be held liable
for monetary awards for “refusing to register, remove from registration, transferring, temporarily
disabling, or permanently cancelling a domain name” in compliance with a court order or in
implementing “a reasonable policy . . . prohibiting the registration of a domain name that is identical to,
confusingly similar to, or dilutive of another’s mark.” 15 U.S.C. §1114(2)(D)(i). In short, the ACPA’s
purpose was twofold—to protect trademark owners against cybersquatters and also shield domain name
registrars and registries from “overreaching trademark owners” seeking to impose liability based on
the bad faith conduct of registrants. See S. Rep. No. 106-140, 1999 WL 594571, at *4 (“The purpose of
the bill is to protect consumers and American businesses, to promote the growth of online commerce,
and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive
registration of distinctive marks as Internet domain names with the intent to profit from the goodwill

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1 associated with such marks–a practice commonly referred to as ‘cybersquatting.’”) & *11 (“The
2 amended bill goes further, however, in order to protect the rights of domain name registrants against
3 overreaching trademark owners.”).
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In creating a statutory immunity under the ACPA for registrars and registries, Congress codified

5 an exemption to liability existing under case law at that time. See S. Rep. No. 106-140, 1999 WL
6 594571, at *11 (“The bill, as amended, also promotes the continued ease and efficiency users of the
7 current registration system enjoy by codifying current case law limiting the secondary liability of
8 domain name registrars and registries for the act of registration of a domain name.”) (citing Lockheed
9 Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (9th Cir. 1999), aff’d by 194 F.3d 980 (9th Cir.
10 1999), and Academy of Motion Picture Arts & Science v. Network Solutions, Inc., 989 F. Supp. 1276
11 (C.D. Cal. 1997), which held that Network Solutions, Inc. (“NSI”), a domain name registrar, could not
12 be held liable for trademark infringement). As discussed below, the relevant case law concludes that
13 registrars are not involved in the potentially infringing uses of a domain name, and lack the ability to
14 monitor and police infringing activities by its users.5
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C.

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Courts And Congress Have Made Clear That Registrars Have No Duty To Police
The Domain Name System For Infringing Activities

Under Lockheed and its progeny, domain name registrars are exempt from liability for trademark

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18 infringement and contributory liability because a registrar is not involved in “the use of domain names
19 in connection with goods and services on the Internet,” i.e., “uses that are capable of infringement.” See
20 Lockheed, 985 F. Supp. at 959-62.6 A registrar’s “acceptance of domain name registrations is not a
21 ‘commercial use’ within the meaning of the Federal Trademark Dilution Act,” and its other “use” is not
22 “trademark use” but rather “the pure machine-linking function is the only use at issue.” Id. at 958-59;
23 see also id. at 956 (“When a domain name is used only to indicate an address on the Internet, the domain
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Plaintiff’s reliance on the services defined in the ICANN Registrar Accreditation Agreement is of no
25 moment as there is nothing in the statute or legislative history to suggest that the ICANN agreement is at
all relevant or that it was even considered by Congress, which largely acted on the statute before the first
26 version of this agreement was even adopted by ICANN on November 4, 1999 (See
http://www.icann.org/en/nsi/icann-raa-04nov99.htm), the same month the ACPA was signed into law by
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President Clinton.
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Congress’ codification of a broad statutory immunity for registrars and registries under the ACPA was
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premised on the lower court’s rationale in Lockheed. See S. Rep. No. 106-140, 1999 WL 594571, at *11.
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1 name is not functioning as a trademark.”) and 960 (“NSI’s use of domain names is connected to the
2 names’ technical function on the Internet to designate computer addresses, not to the names’ trademark
3 function to distinguish goods and services. The fact that NSI makes a profit from the technical function
4 of domain names does not convert NSI's activity to trademark use.”).
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Lockheed further held that a domain name registrar “has no affirmative duty to police the

6 Internet in search of potentially infringing uses of domain names,” and concluded that registrars were in
7 no position to evaluate whether a registrant’s use of a domain name is infringing and had no legal duty
8 to do so. Id. at 963 & 966. Not only does a registrar lack sufficient knowledge of a registrant’s use of a
9 domain name, but the determination of whether a use is infringing is complicated by the “existence of
10 numerous legitimate, non-infringing uses” of a domain name. See id. at 964 & 966 (“NSI is not
11 involved with uses of domain names in connection with Internet resources such as Web sites and e-mail.
12 Therefore, the Court cannot impute knowledge of potential infringement merely from the fact that such
13 uses occurred.”). The same mark legitimately may be used by companies in different industries (such as
14 Delta Airlines and Delta Faucets) and internationally where the same mark may be owned by different
15 companies in different countries. Accordingly, “the degree of uncertainty over infringing uses of
16 domain names makes it inappropriate to impose contributory liability” on registrars. Id. at 964.
As the court concluded in Lockheed, registrars are ill-suited to be the arbiter of domain name

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18 trademark disputes, and courts and Congress have declined to impose those obligations on registrars.7
19 Id. at 966; S. Rep. No. 106-140, 1999 WL 594571, at *11; see also id. at *7 (“Abusive conduct, like
20 cybersquatting, threatens the continued growth and vitality of the Internet as a platform for all these
21 uses. But in seeking to curb such abuses, Congress must not cast its net too broadly or impede the
22 growth of technology, and it must be careful to balance the legitimate interests of Internet users with the
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For this reason, eNom expresses no view on whether the registrant in this case intended to infringe on
25 plaintiff’s rights in registering and using the “peteronastower.net” and “petronastowers.net” domain
names and directing them to pornographic sites. eNom merely points out that the neutral act of allowing
26 a domain forwarding service could not form the basis for imposing liability on a registrar.
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Other jurisdictions have since relied on Lockheed and the immunity under the ACPA to deny similar
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claims asserted against registrars. See, e.g., Bird v. Parsons, 289 F.3d 865, 878-79 (6th Cir. 2002)
(holding that a domain name auction site cannot be held liable for infringement because “[t]he
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possibility that its customers might buy or sell infringing domain names does not alter the fact that
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D.

Holding GoDaddy Liable In This Case Would Be Contrary To Existing Law And
Would Negatively Impact The Court System And DNS Industry

To hold GoDaddy liable for maintaining the third-party registration of “peteronastower.net” and

4 “petronastowers.net,” and for implementing a domain forwarding function set up by the registrant,
5 would run contrary to existing case law and create an unsupported narrowing of the blanket exemption
6 applied to registrars under the ACPA. See Lockheed, 985 F. Supp. at 959-62; 15 U.S.C. § 1114(2)(D)(i)
7 & (iii). Congress and courts have cautioned against “overreaching trademark owners” and “improperly
8 broadening” their existing rights. See Lockheed, 986 F. Supp. at 967 (“Trademark law does not give
9 Lockheed the right to interfere with all uses of the term ‘skunk works’ by current domain name holders.
10 . . . “[A]n extension of contributory liability here would improperly broaden Lockheed’s property rights
11 in its service mark.”); S. Rep. No. 106-140, 1999 WL 594571, at *11.
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There are real limitations to what a registrar can do, and those practicalities underlie the

13 exemption carved out under Lockheed and the ACPA. See Lockheed, 985 F. Supp. at 962 (“NSI neither
14 controls nor monitors the Internet. A domain name, once registered, can be used in connection with
15 thousands of pages of constantly changing information. . . . [And] NSI cannot reasonably be expected
16 to monitor the Internet.”). These were plainly illustrated in Lockheed II::
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It is quite understandable that Congress did not cause defendant as a
domain name registrar, or as keeper of the registry, to be subject to civil
liability under § 1125(d). Although plaintiff now tries to backtrack
somewhat from the position that defendant as registrar should perform
gatekeeper functions for mark owners, even the modified gatekeeper role
it now proposes is untenable. Sheer volume alone would prohibit
defendant performing the role plaintiff would assign. Defendant

22 [defendant] does not use those names”; “[m]oreover, even a domain name that could be used to violate a
registered trademark does not necessarily do so”); Am. Girl, LLC v. Nameview, Inc., 381 F. Supp. 2d
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876, 881-82 (E.D. Wis. 2005) (“[R]egistrars are not obliged to examine domain names to ensure that the
24 registrant is not violating the rights of a third-party”); see also Lockheed Martin Corp. v. Network Solutions,
Inc. (Lockheed II), 141 F. Supp. 2d 648, 655 (N.D. Tex. 2001) (stating that “that Congress did not cause
25 defendant as a domain name registrar, or as keeper of the registry, to be subject to civil liability under
[the ACPA]”); Size, Inc. v. Network Solutions, Inc., 255 F. Supp. 2d 568, 573 (E.D. Va. 2003) (“This
26 Court agrees with the Lockheed II analysis, and finds that NSI’s domain name registration service is just
that-a service. The registrant selects the domain name and provides any content associated with that
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domain name; all that NSI does is ‘translate’ the domain name into the registrant’s IP address and route
28 users to that address. In this regard, NSI’s function is more equivalent to the passive messenger service
provided by the United States Postal Service . . .”).
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simply could not function as a registrar, or as keeper of the registry, if
it had to become entangled in, and bear the expense of, disputes
regarding the right of a registrant to use a particular domain name.
The fact that defendant could theoretically do what plaintiff asks does not
mean that defendant is obligated to do so at the risk of financial ruin. The
reason the UDRP was developed was to provide the mechanism to resolve
these disputes. Not only would imposing plaintiff's scheme render the
UDRP nugatory, it would cause the domain name registration system in its
entirety not to be feasible.

6 Lockheed II, 141 F. Supp. 2d at 655 (emphasis added). If registrars were required to pre-screen
7 registrations for potential infringement and monitor all subsequent activities, business would contract
8 and be delayed by backlogs caused by the new burdens (registrations would no longer be
9 straightforward to process), and operational costs would no doubt escalate and flow to users. See also
10 Ian C. Ballon, E-Commerce and Internet Law: Treatise with Forms 2d Edition §§ 7.01-7.03 (West 2d
11 ed. 2011) (providing a history of early domain name disputes, the business problems NSI faced when it
12 was the sole registrar handling these disputes, and the subsequent expansion of the DNS and reduction
13 in costs). In enacting the ACPA, Congress provided broad immunities to registrars so that they would
14 not be required to take extra-judicial actions in resolving domain name disputes. See S. Rep. No. 10615 140, 1999 WL 594571, at *4 & *7 (stating that the ACPA’s purpose was also to “promote the growth of
16 online commerce,” “provide clarity in the law for trademark owners” while “balanc[ing] the legitimate
17 interests of Internet users with the other interests sought to be protected”).
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Plaintiff here seeks to impose upon GoDaddy and all registrars alike a policing duty that is not

19 required under law, and impossible to realize. The unfairness of plaintiff’s position is also underscored
20 by its refusal to engage in effective and expedient dispute resolution under the UDRP (as advised by
21 GoDaddy), choosing instead to file seriatim lawsuits in federal court. See FAC ¶¶ 49-55; see also
22 Nameview, Inc., 381 F. Supp. 2d at 883 (“The UDRP is an administrative alternative dispute resolution
23 policy which creates a procedure specifically designed to provide a fast and cheap means for resolving
24 domain name disputes. . . . [and] most likely will provide plaintiff with effective relief faster than any
25 procedure available to this court.”). Should liability be held against GoDaddy, courts can expect their
26 dockets will be flooded with domain name disputes. See E-Commerce and Internet Law 2d Edition §
27 7.01 at 7-18 (“Disputes over Internet domain names account for by far the largest single category of
28 Internet-related civil disputes resolved in litigation or arbitration.”). Courts and businesses should not
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BRIEF FOR AMICUS CURIAE ENOM, INC.

1 be burdened by the excessive obligations plaintiff seeks to impose where the law neither requires nor
2 supports a narrowing of the broad immunities granted to registrars under the ACPA and Lockheed.
3 III.

CONCLUSION

4

For the foregoing reasons, eNom respectfully asks that the Court reject plaintiff’s argument for

5 new case law imposing impractical (and ineffective) monitoring obligations on the part of domain name
6 registrars that would be inconsistent with Congressional intent, Ninth Circuit precedent and sound
7 policy.
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9 DATED: November 2, 2011

GREENBERG TRAURIG, LLP

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By s/IanCBallon/
IAN C. BALLON
Attorneys for eNom, Inc.

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BRIEF FOR AMICUS CURIAE ENOM, INC.