Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 112

MOTION for Summary Judgment Notice of Motion, Motion, and Memorandum of Points and Authorities ISO Go Daddy's Motion for Summary Judgment filed by GoDaddy.com, Inc.. Motion Hearing set for 12/7/2011 09:00 AM in Courtroom 3, 3rd Floor, Oakland before Hon. Phyllis J. Hamilton. Responses due by 11/16/2011. Replies due by 11/23/2011. (Attachments: # 1 Proposed Order)(Slafsky, John) (Filed on 11/2/2011)

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JOHN L. SLAFSKY, State Bar No. 195513
DAVID L. LANSKY, State Bar No. 199952
HOLLIS BETH HIRE, State Bar No. 203651
WILSON SONSINI GOODRICH & ROSATI
PROFESSIONAL CORPORATION
650 Page Mill Road
Palo Alto, CA 94304
Bus: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

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Attorneys for Defendant/Counterclaimant
GODADDY.COM, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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PETROLIAM NASIONAL BERHAD,

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Plaintiff,

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vs.

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GODADDY.COM, INC.,

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Defendant.

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GODADDY.COM, INC.,
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Counterclaimant,
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vs.
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PETROLIAM NASIONAL BERHAD,
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Counterclaim Defendant.
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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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CASE NO.: 09-CV-5939 PJH
NOTICE OF MOTION, MOTION,
AND MEMORANDUM OF POINTS
AND AUTHORITIES IN SUPPORT
OF GO DADDY’S MOTION FOR
SUMMARY JUDGMENT

Date:
Time:
Courtroom:

December 7, 2011
9:00 a.m.
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Honorable Phyllis J. Hamilton

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TABLE OF CONTENTS

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Page

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TABLE OF AUTHORITIES .........................................................................................................iii

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NOTICE OF MOTION AND MOTION ........................................................................................ 1

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STATEMENT OF ISSUES TO BE DECIDED .............................................................................. 1

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MEMORANDUM OF POINTS AND AUTHORITIES ................................................................ 2

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I.

INTRODUCTION ............................................................................................................... 2

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II.

BACKGROUND ................................................................................................................. 4

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A.

THE DOMAIN NAME SYSTEM AND DOMAIN NAME
REGISTRATION .................................................................................................... 4

B.

DOMAIN NAME RESOLUTION .......................................................................... 5

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III.

STATEMENT OF FACTS.................................................................................................. 7

IV.

ARGUMENT .................................................................................................................... 11

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A.
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PETRONAS HAS FAILED TO ADDUCE SUFFICIENT EVIDENCE TO
RAISE A TRIABLE ISSUE OF FACT ON ITS CYBERSQUATTING
CLAIM .................................................................................................................. 11

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1.

Go Daddy Has Not “Used” the Disputed Domains as the Registrant
or Registrant‟s Authorized Licensee ......................................................... 11

2.

Go Daddy Did Not Act with a “Bad Faith Intent to Profit” from
Petronas‟s Trademark ................................................................................ 13

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B.

PETRONAS HAS FAILED TO ADDUCE SUFFICIENT EVIDENCE TO
SUPPORT ITS CONTRIBUTORY CYBERSQUATTING CLAIM ................... 16

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1.

Petronas Has Not Established Direct Cybersquatting ............................... 17

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2.

Go Daddy Did Not Exercise “Direct Control and Monitoring” of the
Alleged Cybersquatting ............................................................................. 17

3.

Go Daddy Did Not Have Knowledge That the Registrant was
Cybersquatting .......................................................................................... 18

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C.

GO DADDY IS NOT LIABLE UNDER THE ACPA FOR PERFORMING
BASIC REGISTRAR FUNCTIONS .................................................................... 20

D.

PETRONAS‟S UNFAIR COMPETITION CLAIMS FAIL WITHOUT
VIABLE CYBERSQUATTING CLAIMS ........................................................... 22

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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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THE COURT SHOULD CANCEL PETRONAS‟S TRADEMARK
REGISTRATION .................................................................................................. 22

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1.

The Registration Is Invalid Due to Abandonment .................................... 23

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2.

The Registration is Void for Exceeding the Scope of the Underlying
Registration ............................................................................................... 24

E.

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V.

CONCLUSION ................................................................................................................. 25

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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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TABLE OF AUTHORITIES

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Page(s)

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CASES

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Abdul-Jabbar v. Gen. Motors Corp.,
85 F. 3d 407 (9th Cir. 1996) .............................................................................................. 23

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Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986) ......................................................................................................... 11

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Appliance Recycling Ctrs. of Am., Inc. v. JACO Envtl., Inc.,
No. 09-55168, 378 Fed. Appx. 652 (9th Cir. May 4, 2010).............................................. 22

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Bird v Parsons,
289 F.3d 865 (6th Cir. 2002) ................................................................................. 12, 20, 21

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Bosley Medical Inst., Inc. v. Kremer,
403 F.3d 672 (9th Cir. 2005) ............................................................................................. 11

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Cartoon Network LP, LLLP v. CSC Holdings, Inc.,
536 F. 3d 121 (2d Cir. 2008) ............................................................................................. 13

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Celotex Corp. v. Catrett,
477 U.S. 317 (1986) .......................................................................................................... 11

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Central Mfg., Inc. v. Brett,
492 F.3d 876 (7th Cir. 2007) ............................................................................................. 22

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Cleary v. News Corp.,
30 F.3d 1255 (9th Cir. 1994) ............................................................................................. 22

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CoStar Grp., Inc. v. LoopNet, Inc.,
373 F. 3d 544 (4th Cir. 2004) ............................................................................................ 13

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D. & M. Antique Imp. Corp. v. Royal Saxe Corp.,
311 F. Supp. 1261 (S.D.N.Y. 1969) ............................................................................ 22, 23

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Denbicare U.S.A. Inc. v. Toys “R” Us, Inc.,
84. F.3d 1143 (9th Cir. 1996) ............................................................................................ 22
E&J Gallo Winery v. Spider Webs, Ltd.,
286 F.3d 270 (5th Cir. 2002) ............................................................................................. 14

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Fare Deals, Ltd. v. World Choice Travel.com, Inc.,
180 F. Supp. 2d 678 (D. Md. 2001) .................................................................................. 18

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Ford Motor Co. v. Greatdomains.com, Inc,
177 F. Supp. 2d 635 (E.D. Mich. 2001) .......................................................... 12, 16, 17, 18

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Georgia-Pacific Consumer Prod. LP v. Myers Supply, Inc.,
6:08-cv-6086, 2009 WL 2192721 (W.D. Ark. July 23, 2009),
aff’d 621 F.3d 771 (8th Cir. 2010) ................................................................................... 16

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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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Gracie v. Gracie,
217 F.3d 1060 (9th Cir. 2000) ........................................................................................... 22

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Imperial Tobacco Ltd. v. Philip Morris, Inc.,
899 F.2d 1575 (Fed Cir. 1990) .......................................................................................... 23

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In re Lowenbrau Munchen,
175 U.S.P.Q. 178 (TTAB 1972) ........................................................................................ 24

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Inwood Labs., Inc. v. Ives Labs., Inc.
456 US 844 (1982) ............................................................................................................ 16

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Kessler v. Bishop,
4:08-cv-05554-PJH, 2011 WL 4635117 (N.D. Cal. Oct. 5, 2011) ................................... 11

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Lockheed Martin Corp. v. Network Solutions, Inc.,
141 F. Supp. 2d 648 (N.D. Tex. 2001) ( “Lockheed II”)............................................ passim

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Lockheed Martin Corp. v. Network Solutions, Inc.,
194 F.3d 980 (9th Cir. 1999) ...................................................................................... passim

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Lockheed Martin Corp. v. Network Solutions, Inc.,
985 F. Supp. 949 (C.D. Cal. 1997) .............................................................................. 18, 19

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Lucas Nursery & Landscaping, Inc. v. Grosse,
359 F.3d 806 (6th Cir. 2004) ............................................................................................. 19

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Marmark Ltd. v. Nutrexpa S.A.,
12 U.S.P.Q. 2d 1843 (T.T.A.B. 1989) ......................................................................... 24, 25

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Oromeccanica, Inc. v. Ottmar Botzenhardt GmbH & Co., KG,
226 U.S.P.Q. 2d 996 (C.D. Cal. 1985) .............................................................................. 24

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Sensient Tech. Corp. v. SensoryEffects Flavor Co.,
613 F.3d 754 (8th Cir. 2010) ............................................................................................. 23

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Solid Host, NL v. Namecheap, Inc.,
652 F. Supp. 2d 1092 (C.D. Cal. 2009) ...................................................................... passim

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Southern Grouts & Mortars, Inc. v. 3M Co.,
575 F.3d. 1235 (11th Cir. 2009) .................................................................................. 14, 15

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Verizon California, Inc. v. OnlineNIC, Inc.,
647 F. Supp. 2d 1110 (N.D. Cal. 2009) ............................................................................ 20

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STATUTES

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15 U.S.C. § 1064(3) ...................................................................................................................... 22

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15 U.S.C. § 1119 ........................................................................................................................... 22

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15 U.S.C. § 1125(d) .......................................................................................................... 14, 19, 20

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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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15 U.S.C. § 1125(d)(1)(A) ............................................................................................................. 11

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15 U.S.C. § 1125(d)(1)(A)(i) ........................................................................................................ 13

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15 U.S.C. § 1125(d)(1)(B)(ii) ........................................................................................................ 14

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15 U.S.C. §1125(d)(1)(D) ............................................................................................................. 12

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15 U.S.C. § 1126(e) ....................................................................................................................... 24

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15 U.S.C. § 1127 ..................................................................................................................... 23, 24

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Calif. Bus. & Prof. Code § 17200 ................................................................................................. 22

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RULES

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37 C.F.R. § 2.32(a)(6) ................................................................................................................... 24

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37 C.F.R. § 2.56(b)(1) ............................................................................................................. 23, 24

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Fed. R. Civ. P. 56(e) ...................................................................................................................... 11

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Fed. R. Civ. P. 56 ................................................................................................................... passim

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TMEP § 904.03(g) (8th ed. Oct. 2011) .......................................................................................... 24

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TMEP § 1009 ................................................................................................................................ 24

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TMEP § 1012 ................................................................................................................................ 24

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MISCELLANEOUS

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4 McCarthy on Trademarks and Unfair Competition § 25:73.40 (4th ed. 2010) .......................... 20

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4 McCarthy on Trademarks and Unfair Competition § 29:12 (4th ed. 2010) ............................... 24

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H.R. Rep. No. 105-551 (I) (1998) ................................................................................................. 13

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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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NOTICE OF MOTION AND MOTION

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PLEASE TAKE NOTICE that on December 7, 2011, 2011, at 9:00 a.m. in the courtroom

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of the Hon. Phyllis J. Hamilton, Courtroom 3, United States District Court, Northern District of

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California, 1301 Clay Street, Oakland, California, Defendant/Counterclaimant Go Daddy.com,

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Inc. (“Go Daddy”) will and hereby does move pursuant to Federal Rule of Civil Procedure 56 for

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summary judgment in its favor on all claims asserted by, and against, the Plaintiff/Counterclaim

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Defendant Petroliam Nasional Berhad (“Petronas”) in this action. The motion is based on this

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Notice of Motion and Motion, the Memorandum of Points and Authorities, the attached

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declarations, and exhibits thereto, the pleadings and papers on file in this action, and any other

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submissions or arguments of counsel as may be presented to the Court.

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STATEMENT OF ISSUES TO BE DECIDED
1.

Is Go Daddy entitled to summary judgment dismissing Petronas‟s

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Anticybersquatting Consumer Protection Act (“ACPA”) claim because there is no evidence that

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Go Daddy registered, trafficked in, or used the disputed domains with a bad faith intent to profit

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from Petronas‟s trademark?

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2.

Is Go Daddy entitled to summary judgment dismissing Petronas‟s Contributory

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Cybersquatting claim because (a) there is no finding of any cybersquatting to which Go Daddy

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could contribute, (b) there is no evidence that Go Daddy controlled the cybersquatting conduct;

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and (c) there is no evidence that Go Daddy had the requisite knowledge of underlying

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cybersquatting?

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3.

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Is Go Daddy immune from direct or contributory liability under the ACPA

because it merely performed the basic functions of a registrar?
4.

Is Go Daddy entitled to summary judgment dismissing Petronas‟s Unfair

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Competition claim because there is no basis for the underlying cybersquatting claims and no

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evidence supporting the claim?

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5.

Is Go Daddy entitled to summary judgment granting its counterclaim for

cancellation of Petronas‟s federal trademark registration due to abandonment and/or invalidity?

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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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MEMORANDUM OF POINTS AND AUTHORITIES
I.

INTRODUCTION
Petronas has aggressively over-litigated for two years a cybersquatting case against the

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wrong party. Petronas has taken this wasteful litigation to summary judgment despite these facts:

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it already possesses the two disputed domains, and has controlled them for over a year; the identity

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of the alleged cybersquatter has been publicly available for years, and could have been uncovered

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with one simple Internet search; Petronas could have secured the two domain names within about

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60 days (by February 2010) by using the commonly accepted administrative proceeding for

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recovering domain names in situations like this; Petronas is not aware of any customers or others

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ever learning of the domain names; and the law clearly shields Go Daddy, a domain name

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registrar, from liability for the actions of third parties alleged here.

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This case concerns someone else‟s registration of two domain names –

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<petronastower.net> and <petronastowers.net> (the “Disputed Domains”) – that Petronas claims

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incorporate its trademark. As set forth in detail below, an individual registered the Disputed

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Domains in 2003 with a registrar other than Go Daddy and pointed, or “forwarded,” the domains

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to a pre-existing website featuring pornography. Four years later, in 2007, the individual

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transferred the Disputed Domains to a new registrar, Go Daddy, and pointed them to the same

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pornographic website using Go Daddy‟s automated online “dashboard” for domain name

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registrants.

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More than two years later – six years after the Disputed Domains were first registered –

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Petronas identified one of the Disputed Domains and asked Go Daddy to take action. Go Daddy

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responded immediately, pursuant to its standard policies and practices, notifying Petronas that Go

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Daddy was not the host of the pornography and calling Petronas‟s attention to the Uniform

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Domain Name Dispute Resolution Policy (“UDRP”), which all registrars are required to follow

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and which sets forth an expedited and inexpensive arbitration process for domain name disputes.

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Go Daddy explained that it cannot and does not intervene in such disputes and stated that it

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required a court or arbitral order to comply with Petronas‟s demands to disable the domain name.

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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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Petronas, however, did not initiate a UDRP administrative proceeding, did not take action

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against the registrant of the Disputed Domains and did not even contact the host of the

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pornographic website. Instead, Petronas sued Go Daddy, seeking to hold the domain name

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registrar responsible. Then, even after securing the Disputed Domains, Petronas continued to

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litigate this action, burdening Go Daddy with two years of extensive document discovery, 12

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depositions and repeated motion practice. Yet today, even after considerable litigation, Petronas‟s

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claims against Go Daddy remain meritless.

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In particular, Petronas‟s cybersquatting claims fail because there is no evidence that Go
Daddy registered, trafficked in, or used the Disputed Domains. Petronas‟s argument that Go

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Daddy somehow “used” the Disputed Domains by automatically forwarding them at the initiative

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of its registrant-customer defies common sense and is unsupported by law or fact.

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Petronas‟s cybersquatting claims also fail because there is no evidence suggesting that Go

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Daddy had the requisite bad faith intent to profit from Petronas‟s trademark. There is no dispute

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that Go Daddy‟s systems involved with registration and routing of the Disputed Domains were

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automated, and Go Daddy had no more knowledge of the activities related to these domain names

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than it does for any other of the over 50 million domain names under its management. When

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Petronas did make a trademark claim with Go Daddy, Go Daddy responded promptly, in the

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manner it understood was required by the UDRP and consistent with industry practice: stating that

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registrars cannot and should not insert themselves into disputes between trademark owners and

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domain name registrants over the use of particular domain names.

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As to Petronas‟s claim for contributory cybersquatting, it also fails because there is no

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finding of underlying cybersquatting, there is no evidence that Go Daddy controlled and monitored

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the cybersquatting conduct, and there is no evidence of the “exceptional circumstances” required

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to hold a third party liable.

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Furthermore, Petronas‟s cybersquatting and contributory cybersquatting claims fail because

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there is no genuine issue of fact that domain name forwarding, i.e., pointing a domain name to a

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pre-existing website, is one of the protected routing functions of registrars.

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GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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Nor can Go Daddy be subject to liability for unfair competition where, as here, the
underlying cybersquatting claims fail.
Go Daddy‟s counterclaim for cancellation of Petronas‟s federal trademark registration

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should also be granted. Though Petronas has had ample opportunity to produce the required

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evidence of use of the mark in commerce in the United States, it has failed to do so. The

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registration is defective for this and other reasons detailed below.

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II.

BACKGROUND

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Petronas is an oil and gas company with headquarters in Kuala Lumpur, Malaysia. FAC,
¶¶ 1, 7.1 Go Daddy is the world‟s largest domain name registrar, with over 50 million domain

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names registered by customers around the world. Hanyen, ¶ 2. This action concerns two domain

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names – <petronastower.net> and <petronastowers.net> – that were allegedly used by one or

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more non-parties to violate Petronas‟s trademark rights by cybersquatting. See FAC. ¶ 14.

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Petronas seeks to hold Go Daddy, the registrar of the Disputed Domains, liable for

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cybersquatting merely because the non-party registrant utilized Go Daddy‟s automated systems

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to point the domain names to a pornographic website hosted elsewhere. Id. ¶¶ 63-65.

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A.

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The Internet is a network of interconnected computers and computer networks. Every

THE DOMAIN NAME SYSTEM AND DOMAIN NAME REGISTRATION

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computer connected to the Internet has a numerical address known as an “Internet Protocol

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Address” or “IP Address,” required for one computer to communicate with another. Palage, ¶¶

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32-34. Few people access websites by typing the IP Address. See id. ¶ 35. Instead, an Internet

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user simply types an alpha-numeric “domain name” that represents the IP Address into his/her

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web browser. See id. In response to the entry of a domain name, the user‟s computer

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communicates back and forth with the Domain Name System (“DNS”), a set of servers that

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allow the user to locate the IP Address for the computer that hosts the desired website. See id. ¶¶

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32-37. The DNS does not provide any website content. See id. ¶ 37. Rather, it functions as the

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Citations to the First Amended Complaint will be in the form “FAC, ¶ _.” Citations to
declaration paragraphs or exhibits will be in the form “[Declarant], [¶ or Ex.] __.” Citations to
deposition testimony will be in the form “[Witness], at __.”
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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Internet‟s equivalent of “directory assistance.” See id. The fundamental building block of the

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DNS is the “nameserver,” which is a database of IP Addresses. See id. ¶¶ 35-37.

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The DNS functions properly because the process for acquiring a domain name is

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extremely orderly. The rights to domain names are sold to the public in a process known as

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“domain name registration.” See id. ¶¶ 28-30, 38-40. Yet domain name “registries,” the entities

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responsible for maintaining the authoritative, master list of all domain names, do not deal

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directly with the general public. See id. ¶¶ 27-29. Rather, a person who registers a domain name

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does so through a domain name “registrar” such as Go Daddy. See id. ¶¶ 29, 38. The registrar is

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the designated intermediary between the domain name registrant and the domain name registry.

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See id. ¶¶ 27, 29.2 A registrant chooses a registrar to provide the registration services, and that

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registrar becomes the designated registrar for the selected domain name. See id. ¶¶ 30, 38. Only

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the designated registrar may modify or delete information about domain names in a central

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registry database. See id. ¶¶ 29, 43. After registering the domain name, the registrant uses an

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online dashboard provided by the registrar to designate the nameserver information concerning

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where the website is hosted. See id. ¶¶ 47, 49-52. The registrar‟s participation in this process is

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entirely automated. See id. ¶¶ 48-49; see also Roling, ¶¶ 4-8.

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B.

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“Domain name resolution” is the process whereby the DNS converts a domain name into

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an IP Address that points to a computer hosting a website. See Palage, ¶ 45; see also Roling, ¶ 4.

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Resolution is a multi-step process involving a series of lookups (“resolutions”) on various servers.

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See Palage, Ex. 1 at 28-29.

DOMAIN NAME RESOLUTION

In order for the user‟s browser to determine which computer on the Internet to access, the

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browser performs a domain name lookup and translates that domain name into a unique IP

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Address. See id. In the first instance, this resolution request is sent locally to the DNS resolver

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that is part of the user‟s local operating system (e.g., Windows, Mac OS, etc.). See id. In

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Go Daddy and all other registrars are accredited by the Internet Corporation for Assigned
Names and Numbers (“ICANN”). See Palage, ¶¶ 24, 29.
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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general, it will next query the local nameserver of the user‟s Internet Service Provider (“ISP”)

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(e.g., AT&T, Comcast, etc.). See id., Ex.1 at 28. It will initiate a series of queries to the DNS

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databases, eventually resulting in the authoritative domain nameserver returning the IP Address

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of the computer hosting the sought Internet content. See id., Ex.1 at 28-29. The ISP local

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nameserver then returns this information to the user‟s DNS resolver, thereby allowing the user‟s

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computer to access the Internet content. See id., Ex.1 at 29. This resolution process, by which

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the user obtains the IP address of the computer hosting the desired Internet content from the

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authoritative domain nameserver, is commonly referred to as “routing.” See id. ¶ 41. Registrars

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like Go Daddy play a critical role in the process by giving the registrant an efficient means to

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configure the nameserver to point the user to the desired Internet content. See id. ¶ 53. If

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registrars stopped performing the function of taking name server information and providing it to

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registries, the Internet would grind to a halt. Roling, ¶ 3.

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Using the registrar‟s dashboard, the registrant can choose from several options to point

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his domain name to content. First, the registrant can do nothing, in which case the nameserver

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might route to a “coming soon” page or to a page with other default information. Palage, ¶ 44.

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Second, the registrant can configure the nameserver so that it routes to a “record not found” error

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message. Id. Third, the registrant can configure the nameserver so that it routes to a newly

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created website on a server hosted by the registrar or some third party. Id. Fourth, the registrant

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can configure the nameserver to route to an existing website already associated with another

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domain name. Id. This last form of routing is referred to as “domain name forwarding.” See id.

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¶ 48. When a registrant elects to route his domain name in this fashion, an Internet user typing

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the forwarded domain name into his web browser will be automatically directed to the pre-

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existing website. From the Internet user‟s perspective, there is no difference between forwarding

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and other forms of routing. See id.3

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Petronas itself uses domain name forwarding and thus is familiar with the process. FAC,

¶ 12.
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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Forwarding is a ubiquitous routing service that has been provided by Go Daddy and

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virtually all registrars for more than a decade. See id. ¶¶ 13, 49. Go Daddy provides forwarding

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services for 8.2 million domain names under its management, and has provided such service in

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combination with its other domain name routing services since 2002 or before. Roling, ¶ 13. Go

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Daddy does not charge customers for domain forwarding, but rather offers this routing option as

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part of its registration services. See id. ¶ 2. Go Daddy‟s registration customers, using Go

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Daddy‟s dashboard, can configure the nameserver to forward a domain name to an existing

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website. See Palage, ¶ 50; Roling, ¶¶ 6-8. This automated process is accomplished without any

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interaction between the registrant and Go Daddy personnel. See Roling, ¶¶ 6-8.

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III.

STATEMENT OF FACTS

11

The Disputed Domains were initially registered by a third party through a different

12

registrar, eNom, on May 8, 2003.4 See Slafsky, Exs. 3-4. By May 29, 2004, both Disputed

13

Domains pointed to an IP Address associated with a pornographic website. See id. ¶ 6 & Exs. 1-

14

5. For most of the time between May 29, 2004 and November 11, 2006, at least one of the

15

Disputed Domains was directed to a website displaying pornography. Id. On April 1, 2007,

16

nearly four years after the Disputed Domains were initially registered, the then-registrant –

17

Heiko Schoenekess – changed registrars from eNom to Go Daddy. See id. Exs. 3-4; Hanyen, ¶

18

18 & Ex.7 at pp. 367, 369. Schoenekess used Go Daddy‟s online dashboard to automatically

19

forward the Internet traffic for the Disputed Domains to the same pornographic website they had

20

been associated with in years past. Roling, ¶ 15 & Ex. 4; Slafsky, ¶ 6 & Exs. 1-5.

21

Years later, the <petronastower.net> domain was discovered by iPerintis, a subsidiary of

22

Petronas tasked with searching for potential trademark infringement. Slafsky, Ex. 9 (Gaik, 31:4-

23

32:10). On November 26, 2009, iPerintis contacted Go Daddy to request that Go Daddy “take

24

action against the website associated with the „petronastower.net‟ domain name.” FAC, ¶ 45. Go

25

Daddy responded on November 30, stating that it would not tolerate illegal content on its

26
27
28

4

For the Court‟s convenience, a summary timeline of the key dates related to the Disputed
Domains can be found at Slafsky, Ex. 6.
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

customers‟ websites and would cooperate with law enforcement to get any such websites taken

2

down. Hanyen, Ex. 8. Go Daddy further informed Petronas that:

3

any disputes over the ownership or wording of the domain name itself will need to
be sent to either the registrant, through an arbitration forum such as World
Intellectual Property Organization ... or the local court system. Per ICANN
regulations, domain registrars are prohibited from becoming involved in domain
ownership disputes.

4
5
6

Id. Petronas did not proceed as Go Daddy suggested.5 Instead of utilizing an arbitration

7
procedure, which Petronas had successfully used four times previously, id. ¶ 70, Petronas sought
8
to inject Go Daddy into its dispute with the registrant.
9
On December 16, 2009 counsel for Petronas submitted a trademark claim to Go Daddy.
10
11

Hanyen, Ex. 9. Counsel attached Go Daddy‟s “Trademark and/or Copyright Infringement
Policy,” which states:

12
Domain Name Dispute Claims
13

Please refer to the Uniform Domain Name Dispute Resolution Policy (“the
UDRP”) if you have a concern or dispute concerning a domain name. The UDRP
covers domain name disputes; this policy specifically excludes domain name
disputes.

14
15
16

Id. Go Daddy responded the same day, informing Petronas that:
17
[a]lthough the domain PETRONASTOWER.NET is registered through our
company, the domain is forwarding to a website that is hosted elsewhere. Any
issues regarding the content of the website will need to be addressed to the
owner of the site, either directly, or to the hosting provider.

18
19
20

Id., Ex. 10. Further, consistent with its stated policy, Go Daddy reiterated:
21
We can only process claims of trademark infringement against the content of
websites that we host. ICANN, the managing body of the internet, domain name
registrars, specifically prohibits domain registrars from becoming involved in
disputes over domain ownership in their Uniform Domain Name Dispute
Resolution Policy. Any disputes over the ownership or wording of the domain
name itself will need to be sent either to the owner, or through an arbitration
forum, or the local court system.

22
23
24
25
26
27
28

5

Had Petronas initiated the suggested arbitration proceeding at that time, it likely would have
obtained ownership of the Disputed Domain within approximately 60 days. Palage, ¶ 82.
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

Id. Indeed, the UDRP governs the relationship between the registrar and its customers and is

2

incorporated into all domain registration agreements. Id., Ex. 4; Palage, ¶ 64. As an ICANN-

3

accredited registrar, Go Daddy is required to implement and follow the UDRP for disputes

4

concerning domain names. See Palage, ¶ 64; Slafsky, Ex. 11 (Hanyen (10/20/2011), 6:17-7:17,

5

36:2-11), id., Ex. 10 (Hanyen (10/12/2011), 7:6-17, 33:16-34:3). That policy requires registrars,

6

other than in exceptional circumstances, to maintain the status quo during a domain name dispute

7

until receipt of directions from the registrant, an order from a court or arbitral tribunal, or the

8

decision of an administrative panel. Hanyen, Ex. 4 (UDRP), ¶¶ 3, 7; Slafsky, Ex. 12 (Bilunes,

9

9:1-19); id. Ex. 11 (Hanyen (10/20/2011), 16:3-17). (Domain name disputes involving the right

10

to use a trademark in a domain name are not exceptional circumstances under the UDRP. See

11

Palage, ¶ 81). Additionally, as Go Daddy informed Petronas, the UDRP specifically prohibits

12

registrars from becoming involved in disputes over domain name ownership. Hanyen, Ex. 4

13

(UDRP), ¶¶ 3, 7.

14

On December 18, 2009, Petronas initiated this lawsuit by filing a complaint and a motion

15

for a temporary restraining order. Go Daddy, in accordance with its standard operating

16

procedures and the requirements of the UDRP, locked the domain name. Slafsky, Ex. 13 (Ede,

17

14:4-17); id., Ex. 12 (Bilunes, 12:25-13:7); id., Ex. 11 (Hanyen (10/20/2011), 16:3-17, 23:9-21).

18

This Court denied the TRO motion. See Dkt. No. 21.

19

On January 29, 2010, Petronas initiated a Lanham Act in rem proceeding in this Court

20

against the domain name <petronastower.net>. See Case No. 4:10-cv-00431-PJH. Petronas

21

obtained an Order for the transfer of <petronastower.net> and Go Daddy completed the transfer

22

to Petronas‟s counsel on May 18, 2010. Hanyen, ¶ 24.

23

Petronas discovered a second allegedly infringing domain name - <petronastowers.net> -

24

in July 2010. Just as before, counsel for Petronas submitted a trademark claim to Go Daddy and

25

included a copy of Go Daddy‟s policy stating that domain name disputes were governed by the

26

UDRP. Id., Ex. 11. Again, Go Daddy responded that, because the website was hosted

27

elsewhere, issues regarding the content of the website had to be addressed with the owner of the

28

website or the hosting provider. Id., Ex. 12; Hanyen (10/20/2011), 25:3-14. Go Daddy
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

reiterated that it was prohibited by ICANN and the UDRP from getting involved in such

2

disputes. Hanyen, Ex. 12.

3

On July 12, 2010, Petronas initiated an in rem proceeding in this Court, this time against

4

the domain name <petronastowers.net>. See Case No. 4:10-cv-03052-PJH. This second in rem

5

action – Petronas‟s third lawsuit in this matter – resulted in the transfer of the domain name to

6

Petronas on August 30, 2010. See Hanyen, ¶ 27.

7

On September 9, 2010 this Court granted Go Daddy‟s motion for judgment on the

8

pleadings, dismissing all claims. Dkt. No. 67. It held that Petronas failed to plead facts

9

“sufficient to show that GoDaddy „used‟ the domain name, or that it registered or maintained the

10

domain name with a „bad faith intent to profit‟ from the registration or maintenance of the

11

„Petronas‟ mark.” Id. at p. 4. Additionally, this Court held that if Go Daddy‟s forwarding

12

service was “substantially similar to the „routing‟ service offered by NSI in Lockheed . . .

13

[Petronas‟s] cybersquatting claims will likely fail.” Id. Despite already possessing the Disputed

14

Domains, Petronas refused to let go of the lawsuit, and instead filed the FAC. See Dkt. No. 69.

15

Go Daddy moved to dismiss, but the Court held that it was:

16
17
18

unable to resolve a number of the issues raised in the present motion in the
absence of a developed record. Among other things, the court requires a record
clarifying the mechanics of what GoDaddy did or does with regard to the disputed
domain names, and what “forwarding” and “routing” are and whether either or
both can be considered part of domain name registration services generally or the
services offered by GoDaddy.

19
20
21

Dkt. No. 87.
On May 19, 2011, Go Daddy filed its Answer to the FAC (see Dkt. No. 89) and on July 28,

22

2011 filed its Amended Answer and Counterclaim. See Dkt. No. 106. Go Daddy‟s Counterclaim

23

seeks cancellation of United States Trademark Registration No. 2,969,707 for the mark

24

PETRONAS AND DESIGN. See Dkt. No. 106 at pp. 12-14.

25
26

Fact discovery in this action closed on October 19, 2011. Expert discovery is to close on
November 19, 2011.

27
28
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1
2

IV.

ARGUMENT
Summary judgment is appropriate where there are no genuine issues of material fact and

3

the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56. “Material facts are

4

those that might affect the outcome of the case.” Kessler v. Bishop, 4:08-cv-05554-PJH, 2011 WL

5

4635117, at *7 (N.D. Cal. Oct. 5, 2011) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248

6

(1986)). A dispute as to a material fact is not “genuine” unless “there is sufficient evidence for a

7

reasonable jury to return a verdict for the nonmoving party.” Id. A party seeking summary

8

judgment “bears the initial burden of informing the court of the basis for its motion, and of

9

identifying those portions of the pleadings and discovery responses that demonstrate the absence of

10

a genuine issue of material fact.” Id. (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)).

11

On any issue where the nonmoving party will bear the burden of proof at trial, “the moving party

12

can prevail merely by pointing out to the district court that there is an absence of evidence to

13

support the nonmoving party‟s case.” Id. (citing Celotex, 477 U.S. at 324–25). Where, as here, the

14

moving party meets its initial burden, the opposing party must set forth specific facts showing that

15

there is some genuine issue for trial in order to defeat the motion. See id. (citing Fed. R. Civ. P.

16

56(e); Anderson, 477 U.S. at 250).

17
18

A.

PETRONAS HAS FAILED TO ADDUCE SUFFICIENT EVIDENCE TO
RAISE A TRIABLE ISSUE OF FACT ON ITS CYBERSQUATTING
CLAIM

19

In order to prevail on its ACPA claim, Petronas must establish that (1) Go Daddy

20

registered, trafficked in, or used the Disputed Domains; (2) the Disputed Domains are identical or

21

confusingly similar to Petronas‟s distinctive or famous trademark; and (3) Go Daddy's actions

22

were undertaken with a bad faith intent to profit from Petronas's mark. 15 U.S.C. §1125(d)(1)(A);

23

see also Bosley Medical Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir. 2005). There is

24

insufficient evidence for a reasonable juror to find for Petronas on elements (1) or (3).

25

1.

Go Daddy Has Not “Used” the Disputed Domains as the Registrant or
Registrant’s Authorized Licensee

26
27
28

Petronas seeks to hold Go Daddy liable under the ACPA for allegedly “using” the Disputed
Domains to route Internet users via Go Daddy nameservers to a third-party website, see FAC,
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

¶ 63,6 but this is not a “use” prohibited by the statute. Rather, only the domain name registrant or

2

the registrant‟s authorized licensee can “use” a domain name for purposes of the ACPA. 15

3

U.S.C. §1125(d)(1)(D); see also, Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp.

4

2d 648, 655 (N.D. Tex. 2001) (“Lockheed II”) (“Section 1125(d)(1)(D) expressly limits the „uses‟

5

feature to the domain name registrant or the registrant‟s authorized licensee”).

6

The undisputed evidence establishes that Heiko Schoenkeness, not Go Daddy, was the

7

registrant of the Disputed Domains. See FAC, ¶¶ 41, 53; see also Hanyen, Exs. 9, 11.

8

Accordingly, Go Daddy can only be liable if it is an “authorized licensee” of the registrant. But

9

there is not a shred of evidence to support a finding that Go Daddy acted as the registrant‟s

10

authorized licensee. There is no contract between the registrant and Go Daddy that grants Go

11

Daddy a license to use the Disputed Domains. There also is no evidence of communication

12

between Go Daddy and the registrant in which the registrant might have granted Go Daddy a

13

license to use the Disputed Domains. Thus, there is no genuine issue of material fact that Go

14

Daddy was not acting as the authorized licensee of the registrant, and Go Daddy is entitled to

15

summary judgment on the ACPA claim. See Bird v. Parsons, 289 F.3d 865, 881 (6th Cir. 2002)

16

(plaintiff failed to state an ACPA claim based on “use” of a domain name because there was no

17

allegation that defendant was the registrant‟s authorized licensee).
Moreover, Go Daddy‟s conduct is not the type of “use” that is covered by the ACPA. Go

18
19

Daddy neither created the website to which the Disputed Domains pointed, nor placed any content

20

on such website, and it has never been associated with that website. FAC, ¶¶ 49, 54. The ACPA is

21

directed at illegitimate uses of a domain name intended to simply profit from the value of a

22

trademark. See Ford Motor Co. v. Greatdomains.com, Inc, 177 F. Supp. 2d 635, at 642, 645 (E.D.

23

Mich. 2001). Go Daddy, as a registrar, merely provided the infrastructure for the registrant to route

24

the Disputed Domains automatically to the website of his choosing. See FAC, ¶ 44. This is not

25

the type of illegitimate use addressed by the statute.

26
27
28

6

Petronas does not seek to hold Go Daddy liable for “registering” or “trafficking” in the
Disputed Domains.
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

2.

Go Daddy Did Not Act with a “Bad Faith Intent to Profit” from
Petronas’s Trademark

2
3

Although “bad faith” is an element considered in other causes of action, it has a highly

4

specific meaning in the context of the ACPA. “The bad faith required to support a cybersquatting

5

claim is not general bad faith, but a „bad faith intent to profit from the mark.‟” Solid Host, NL v.

6

Namecheap, Inc., 652 F. Supp. 2d 1092, 1109 (C.D. Cal. 2009) (quoting 15 U.S.C.

7

§ 1125(d)(1)(A)(i)). (emphasis in original) Where, as here, there is a lack of evidence that the

8

defendant had a bad faith intent to profit from the plaintiff‟s specific trademarks, summary

9

judgment should be granted. Lockheed II, 141 F. Supp. 2d at 654 (granting summary judgment

10

due to lack of evidence that defendant had bad faith intent to profit from plaintiff‟s specific marks).

11

First, there is no evidence of any bad faith intent by Go Daddy. With respect to Go

12

Daddy‟s initial conduct in forwarding the Disputed Domains to a third-party website, the

13

undisputed evidence demonstrates that Go Daddy had no intent because, inter alia, it engaged in

14

no volitional conduct. Go Daddy‟s dashboard is an automated system. Roling, ¶¶ 4-8. This

15

system allows the registrant to set the nameservers and otherwise determine where to route the

16

domain name. Munson, ¶ 7. In this case, the registrant of the Disputed Domains utilized the

17

system to cause Internet users who typed the Disputed Domains into their browser to be routed to

18

an existing website hosted by a third party. See Roling, ¶¶ 15-16; Munson, id. ¶ 8. Absent any

19

volitional conduct, Go Daddy itself cannot be found liable under a statute that requires intentional

20

conduct, a conclusion that is well-established in the copyright context. See, e.g., Cartoon Network

21

LP v. CSC Holdings, Inc., 536 F. 3d 121, 131–32 (2d Cir. 2008) (person who uses automated

22

system supplies requisite volitional conduct, not provider of system); CoStar Grp., Inc. v. LoopNet,

23

Inc., 373 F.3d 544, 551 (4th Cir. 2004) (volitional conduct required for infringement claim not

24

satisfied by providing automated system that responds indiscriminately to user requests); H.R.

25

Rep. No. 105-551 (I) at 11 (1998) (“As to direct [copyright] infringement, liability is ruled out for

26

passive, automatic acts engaged in through a technological process initiated by another.”).

27

Notably, courts interpreting the ACPA have informed their decisions based on interpretations of

28
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

the Copyright Act. See, e.g., E&J Gallo Winery v. Spider Webs, Ltd., 286 F.3d 270 (5th Cir.

2

2002).

3

There also is no evidence of bad faith intent arising from Go Daddy‟s maintenance of the

4

Disputed Domains after being notified by Petronas of its alleged trademark rights. The nine non-

5

exclusive statutory factors that courts may consider when evaluating whether the defendant acted

6

with bad faith intent, see 15 U.S.C. § 1125(d), are generally inapplicable to registrars. See, e.g.,

7

Lockheed II at 655 (“[N]one of the conditions and conduct listed [in the nine factors] would be

8

applicable to a person functioning solely as a registrar or registry of domain names”). However,

9

following the list of factors, the ACPA contains a catch-all provision that is directly on point:

10

“Bad faith intent described under subparagraph (A) shall not be found in any case in which the

11

court determines that the person believed and had reasonable grounds to believe that the use of

12

the domain name was a fair use or otherwise lawful.” 15 U.S.C. § 1125(d)(1)(B)(ii).
Here, the undisputed evidence establishes that Go Daddy‟s intent in maintaining the

13
14

Disputed Domains following notice of Petronas‟s trademark claims until receipt of a transfer

15

order was to comply with Go Daddy‟s standard operating procedures and to implement the

16

UDRP. Slafsky, Ex. 11 (Hanyen (10/20/2011), 29:24-30:5).7 Go Daddy drafted its standard

17

operating procedures in order to comply with the UDRP, to which it is bound under its

18

accreditation agreement with ICANN.8 Go Daddy took no action on Petronas‟s trademark

19

claims other than (i) providing Petronas with information to assist it in seeking a transfer order,

20

and (ii) locking each domain upon notice of the commencement of a legal proceeding until

21

receipt of a transfer order, because that is what it understood was required by the UDRP for such

22

domain name disputes.

23
24

Second, there is no evidence that Go Daddy acted with an intent to profit. As explained by
the Eleventh Circuit, “[p]roving „bad faith‟ is not enough. A defendant is liable only where a

25
26
27
28

7

See also Slafsky, Ex. 11 (Hanyen (10/20/2011), 16:3-17, 36:2-11); id., Ex. 10 (Hanyen
(10/12/2011), 7:6-17, 33:16-34:3); id., Ex. 12 (Bilunes, 9:1-19; 12:25-13:7, 15:22-16:7).
8
See, e.g., Slafsky, Ex. 12 (Bilunes, 9:1-19); id., Ex. 11 (Hanyen (10/20/2011), 29:24-30:5);
36:2-11; id., Ex. 10 (Hanyen (10/12/2011), 7:6-17; 33:16-34:3); see also Palage, ¶ 62.
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

plaintiff can establish that the defendant had a „bad faith intent to profit.” Southern Grouts &

2

Mortars, Inc. v. 3M Co., 575 F.3d. 1235, 1246 (11th Cir. 2009). Here, Go Daddy does not charge

3

registrants for utilizing domain forwarding as a means of routing their domain names. Slafsky, Ex.

4

14 (Hertz, 14:15-17); FAC, ¶ 69. Additionally, there is no evidence that Go Daddy otherwise

5

profited, or intended to profit, from the registrant‟s use of the forwarding service to route the

6

Disputed Domains to a website hosted by a third party, or from maintaining that routing pending

7

resolution of the domain name dispute in accordance with Go Daddy‟s policies and standard

8

operating procedures.

9

Third, there is no evidence that Go Daddy acted with an intent to profit from Petronas‟s

10

specific trademark, as required to establish an ACPA claim. See, e.g., Solid Host, 652 F. Supp. 2d

11

at 1110 (finding inadequate allegations of intent to profit from specific mark where “[t]he only

12

intent to profit alleged is linked to [defendant‟s] operation and promotion of its anonymity

13

service”); Lockheed II, 141 F. Supp. 2d at 654-55 (granting summary judgment on ACPA claim

14

where no evidence defendant acted with bad faith intent to profit from “specific marks.”). The

15

record reflects that the registrant of the Disputed Domains, in transferring the registrations to Go

16

Daddy, represented that “each registration [he made was] being done so in good faith and that [he

17

had] no knowledge of it infringing upon or conflicting with the legal rights of a third party or a

18

third party‟s registration, trademark or trade name. [He] also warrant[ed] that the domain name[s]

19

being registered [would] not be used in connection with any illegal activity.” See Jett, ¶ 3 & Ex. 3

20

at 7. Thus there was no basis for Go Daddy to believe there might be any unlawful conduct at the

21

time the registrations were transferred to Go Daddy. Even after Go Daddy received Petronas‟s

22

trademark claims, there is no evidence that Go Daddy maintained the Disputed Domains with the

23

intent to profit from Petronas‟s marks. Rather, the evidence reflects that Go Daddy followed its

24

standard policies and procedures and treated Petronas‟s claim the same as it would treat any other

25

such claim.

26
27
28
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

B.

PETRONAS HAS FAILED TO ADDUCE SUFFICIENT EVIDENCE TO
SUPPORT ITS CONTRIBUTORY CYBERSQUATTING CLAIM

2
3

There is no contributory cybersquatting claim set forth in the ACPA statute. Contributory

4

liability for trademark infringement has been found where a manufacturer or distributor either (1)

5

intentionally induces another to infringe a trademark, or (2) continues to supply its product with

6

actual or constructive knowledge that the product is being used to engage in trademark

7

infringement. Inwood Labs., Inc. v. Ives Labs., Inc. 456 US 844, 855 (1982). Where, as in the

8

case of a domain name registrar, the defendant provides a service rather than a product, the

9

“supplies a product” element is replaced by a showing that the defendant exercised “[d]irect

10

control and monitoring of the instrumentality used by a third party to infringe the plaintiff‟s mark.”

11

Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999); see Solid

12

Host, 652 F. Supp. 2d at 1112 (under extent of control theory plaintiff must prove defendants had

13

knowledge and direct control and monitoring of instrumentality used to infringe). In all such

14

cases, there must first be proof of direct infringement in order to find another liable for

15

contributory infringement. See, e.g., Georgia-Pacific Consumer Prod. LP v. Myers Supply, Inc.,

16

6:08-cv-6086, 2009 WL 2192721, *4 (W.D. Ark. July 23, 2009) (“[t]he second element of

17

contributory infringement is actual infringement”), aff’d 621 F.3d 771, 774 (8th Cir. 2010)

18

(upholding summary judgment of no contributory infringement where underlying behavior did not

19

constitute direct infringement).

20

While it is not clear that a claim for contributory cybersquatting even exists, two district

21

courts have assumed that it does, and have analyzed such claims under the Lockheed rubric.9 See

22

Solid Host, 652 F. Supp. 2d at 1111-13; Ford, 177 F. Supp. 2d 635, 646-47. However, these cases

23

make clear that to establish the requisite knowledge of underlying cybersquatting, a trademark

24
25
9

26
27
28

It is Go Daddy‟s position that Courts should not expand the scope of secondary liability in
this context. The very nature of cybersquatting implicates a host of service providers – domain
name registrars and registries, website hosts, and others providing servers that facilitate domain
name resolution. Embroiling these companies in litigation simply because they provided
automated services and declined to terminate such services upon receipt of notice of a domain
name dispute would be directly contrary to Congress‟s intent in enacting the ACPA.
GO DADDY‟S NOTICE OF MOTION, MOTION AND
MEMO ISO MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

plaintiff would have to make a showing well beyond notice of a cybersquatting claim. As

2

explained by the Ford Motor court:

3
4
5
6
7
8

[B]ecause the ACPA requires a showing of „bad faith intent‟ – a subjective
element not required under traditional infringement, unfair competition, or
dilution claims – the standard would be somewhat heightened. For example, it
would be insufficient that an entity such as [a registrar] were merely aware that
domain names identical or similar to protected marks were being sold over its
website. Rather, because legitimate uses of others [sic] marks are protected under
the ACPA, a plaintiff would have to demonstrate that the “cyber-landlord” knew
or should have known that its vendors had no legitimate reason for having
registered the disputed domain names in the first place. Because an entity such as
[a registrar] generally could not be expected to ascertain the good or bad faith
intent of its vendors, contributory liability would apply, if at all, in only
exceptional circumstances.

9
10
11

Ford Motor, 177 F. Supp. 2d at 647; accord Solid Host, 652 F. Supp. 2d at 1114.
Here, Petronas does not allege that Go Daddy induced the registrant of the Disputed

12

Domains to engage in cybersquatting, nor is there any evidence of such inducement. Rather,

13

Petronas bases its contributory cybersquatting claim on the allegations that Go Daddy continued

14

supplying its forwarding service to the registrant after it knew or should have known that the

15

registrant was cybersquatting. This claim cannot survive summary judgment for multiple reasons.

16
17

1.

Petronas Has Not Established Direct Cybersquatting

Preliminarily, Petronas cannot proceed with its contributory cybersquatting claim because

18

it has not adduced sufficient evidence for a jury to conclude that the registrant of the Disputed

19

Domains engaged in cybersquatting. Discovery has closed, yet Petronas has not obtained, nor

20

even sought, any discovery from the party that allegedly engaged in cybersquatting. Without such

21

discovery, it is impossible to determine the registrant‟s motives in registering the Disputed

22

Domains, and thus whether he acted with bad faith intent to profit from the Petronas‟s trademarks.

23

Petronas has offered insufficient evidence of the registrant‟s intent beyond the fact that the

24

Disputed Domains included the letter string “petronas.” Moreover, Petronas has admitted that it is

25

not aware of any complaints from customers regarding the Disputed Domains. Slafsky, Ex. 9

26

(Gaik, 55:5-16). There is simply no record for determining bad faith intent to profit.

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2.

Go Daddy Did Not Exercise “Direct Control and Monitoring” of the
Alleged Cybersquatting

2
3

Even assuming the registrant of the Disputed Domains was engaged in cybersquatting, Go

4

Daddy cannot be held liable as a “secondary cybersquatter” because by providing registration and

5

routing services to the registrant, Go Daddy did not exercise the type of control required to

6

establish a contributory infringement claim against a service provider. Indeed, the Ninth Circuit

7

already held as much in Lockheed. There, a trademark owner sued a domain name registrar for

8

contributory trademark infringement based upon the registrar‟s registration of domain names

9

containing the plaintiff‟s marks, routing Internet users to websites the registrant associated with the

10

marks, and refusing to cancel the registrations upon notice of a trademark domain name dispute.

11

Lockheed, 194 F.3d at 982-83. The Court affirmed the district court‟s grant of summary judgment

12

to the defendant registrar on this claim because domain name registration and routing are a service,

13

rather than a product, and providing routing “does not entail the kind of direct control and

14

monitoring required to justify an extension of the „supplies a product‟ requirement.” Id. at 984-85.

15

The facts here are virtually identical and mandate the same result. Go Daddy provided registration

16

and routing services to the registrant of the Disputed Domains, but it exercised no control over the

17

alpha-numeric string selected by the registrant - the act that allegedly amounted to cybersquatting.

18

Unlike the landlord of a flea market who licenses real estate and can reasonably be expected to

19

monitor the merchandise sold on his premises, a domain name registrar cannot reasonably be

20

expected to monitor the millions of domain name registrations that occur every year to determine

21

whether the domain names include a trademark, and if so, to determine the registrants‟

22

authorization and intent. See id. at 985; see also Fare Deals, Ltd. v. World Choice Travel.com,

23

Inc., 180 F. Supp. 2d 678, 689 (D. Md. 2001).

24

3.

Go Daddy Did Not Have Knowledge That the Registrant was
Cybersquatting

25
26

Go Daddy also is entitled to summary judgment on Petronas‟s contributory cybersquatting

27

claim for the independent reason that there are no “exceptional circumstances” that would justify

28

imputing to Go Daddy knowledge that the registrant registered the Disputed Domains with a bad
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faith intent to profit from Petronas‟s mark. A domain name registrar is not generally expected to

2

ascertain the good or bad faith intent of its registrants. Ford, 177 F. Supp. 2d at 647. It is well

3

established that receipt of a demand from a trademark owner is insufficient to impute knowledge.

4

See, e.g., Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 963-64 (C.D. Cal.

5

1997). In fact, Petronas‟s submissions to Go Daddy (which attempted to comply with Go Daddy‟s

6

policy for claims pertaining to infringement on websites hosted by Go Daddy) simply reflected

7

that Petronas owned rights in the mark “PETRONAS,” and provided insufficient information from

8

which Go Daddy could determine that the registrant was engaged in cybersquatting. Hanyen, Exs.

9

9, 11. Go Daddy followed its policies and standard operating procedures in handling these claims,

10

and referred Petronas to the UDRP, as was required by its agreement with ICANN. See infra at 7-

11

9. There simply is no evidence to support a finding of “exceptional circumstances” that would

12

warrant imputing to Go Daddy in 2009 and 2010 knowledge that the registrant registered the

13

Disputed Domains with a bad faith intent to profit from Petronas‟s mark.

14

Finally, requiring domain name registrars to conduct extensive investigations into a

15

registrant‟s intent in registering a domain name upon receipt of notice from a trademark owner of

16

alleged cybersquatting is wholly impractical. This practice would impose a heavy burden and

17

would contravene Congress‟s intent in enacting the ACPA. Go Daddy currently maintains over 50

18

million domain names. See Hanyen, ¶ 2. It currently receives notice of more than a thousand

19

trademark claims every year (Slafsky, Ex. 12 (Bilunes, 16:8-14); id., Ex. 10 (Hanyen (10/12/2011),

20

51:2-6); id., Ex. 15 (Simonini, 6:16-19)), and that number is steadily increasing. Slafsky, Ex. 13

21

(Ede, 30:10-22). While a flea market operator can send someone to its property to periodically

22

monitor what is being sold, there is no simple way for Go Daddy to determine whether a registrant

23

is cybersquatting. A determination of bad faith intent to profit from another‟s mark requires

24

consideration of not only the nine permissive factors set forth in 15 U.S.C. § 1125(d), but also the

25

totality of the circumstances. Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 811

26

(6th Cir. 2004). Moreover, a determination of cybersquatting would require a consideration of the

27

trademark owner‟s rights, which are dynamic over time, thereby making a mere assertion of rights

28

uncertain. See Lockheed, 985 F. Supp. at 963. All of these complexities and uncertainties make
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imposing an obligation on registrars to determine whether a particular registrant is cybersquatting

2

far more burdensome than the obligation imposed on a flea market operator to police its own space

3

upon notice of infringement. They also make it unreasonable to impute knowledge of

4

cybersquatting to registrars like Go Daddy who refer parties complaining about use of a trademark

5

in a domain name to the UDRP and maintain the status quo until receipt of a transfer order. Cf.

6

Lockheed, 985 F. Supp. at 965-66. For this reason, the district court in Lockheed II recognized

7

that

8
9
10
11
12

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.
Lockheed II at 655.
C.

GO DADDY IS NOT LIABLE UNDER THE ACPA FOR PERFORMING
BASIC REGISTRAR FUNCTIONS

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14

In addition to failing for lack of evidence, Petronas‟s cybersquatting claim also fails

15

because it is clear from the statute, the legislative history, and the supporting case law that

16

registrars are not liable under the ACPA for performing registrar functions. The ACPA

17

“effectively codifies the pre-2000 case law . . . which held that a registrar that reserved or

18

registered an allegedly infringing domain name was not responsible as a direct or contributory

19

trademark infringer.” 4 McCarthy on Trademarks and Unfair Competition § 25:73.40 (4th ed.

20

2010). Courts that have addressed the issue of registrar liability have uniformly recognized that

21

registrars who are performing the functions of a registrar are not liable under the Act. As the

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district court recognized in Lockheed II:

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It is quite understandable that Congress did not cause defendant as a domain name
registrar . . . to be subject to civil liability under § 1125(d). . . . Sheer volume
alone would prohibit defendant performing the role plaintiff would assign.
Defendant simply could not function as a registrar . . . 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 reason the UDRP was developed was to
provide the mechanism to resolve these disputes.

27

Lockheed II at 655. See also, Solid Host, 652 F. Supp. 2d. at 1104-05 (“where the record indicates

28

that a defendant did nothing more than act as a registrar, no liability under § 1125(d) will lie”);

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Verizon California, Inc. v. OnlineNIC, Inc., 647 F. Supp. 2d 1110, 1126 (N.D. Cal. 2009)

2

(recognizing immunity for registrar acting as registrar); Bird, 289 F.3d. at 877-81(finding domain

3

name registrar not liable for trademark infringement, unfair competition, trademark dilution, or

4

violations of the ACPA).

5

Here the record establishes that Go Daddy did nothing more in providing forwarding

6

services and maintaining the Disputed Domains than act as a registrar. The Ninth Circuit has

7

explained the role of a registrar as “differ[ing] little from that of the United States Postal Service:

8

when an Internet user enters a domain-name combination [into his or her Internet browser], [the

9

registrar] translates the domain-name combination to the registrant‟s IP Address and routes the

10

information or command to the corresponding computer.” Lockheed Martin Corp. v. Network

11

Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999). Just as delivery of the mail does not subject

12

the Postal Service to liability for the contents of packages that pass through its service, a

13

registrar‟s routing of an Internet user to a website – as directed by a domain name registrant in an

14

automated process – does not take that registrar outside the role of a registrar. See Id. at 984-85

15

(agreeing with district court that registration and routing of domain name does not extend

16

registrar‟s involvement beyond registration services); Lockheed II, 141 F. Supp. 2d at 651-55

17

(defendant, which maintained directory linking domain names with IP number of domain

18

nameservers that connected the domain names with other Internet computers that host websites

19

not subject to ACPA liability); Order Granting Go Daddy‟s Motion for Judgment on the

20

Pleadings, at 3 (noting that in Lockheed, “the defendant [registrar] was not liable based on its

21

„routing‟ of a domain-name registrant‟s allegedly infringing domain name, as the „routing‟ was

22

simply a „service‟ connected to the registration service.”).

23

The evidence submitted by Go Daddy demonstrates that forwarding is simply a form of

24

routing. See Palage, ¶¶ 41 - 56. That evidence also demonstrates that forwarding is a service

25

almost universally offered by registrars to registrants as part of the registration service. See id. ¶¶

26

13, 42, 49. It is essentially the same function that the Court in Lockheed II concluded would not

27

subject a registry to ACPA liability. See 141 F. Supp. 2d at 651, 654-55. Because routing is part

28
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MEMO ISO MOTION FOR SUMMARY JUDGMENT
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of the basic registration service provided by registrars, Go Daddy cannot be liable under the ACPA

2

for providing this service and maintaining the registrations.

3

D.

PETRONAS’S UNFAIR COMPETITION CLAIMS FAIL WITHOUT
VIABLE CYBERSQUATTING CLAIMS

4
5

Petronas‟s remaining claim is based on the exact same factual allegations as the above-

6

discussed ACPA claims and is otherwise “substantially congruent” to those claims. See FAC, ¶¶

7

97-101. The Ninth Circuit has “consistently held that state common law claims of unfair

8

competition and actions pursuant to California Business and Professions Code § 17200 are

9

„substantially congruent‟ to claims made under the Lanham Act.” Cleary v. News Corp., 30 F.3d

10

1255, 1262-63 (9th Cir. 1994) (affirming grant of summary judgment as to derivative state law

11

claims where summary judgment was properly granted as to underlying Lanham Act claims); see

12

also Appliance Recycling Ctrs. of Am., Inc. v. JACO Envtl., Inc., No. 09-55168, 378 Fed. Appx.

13

652, 656 (9th Cir. May 4, 2010) (same); Denbicare U.S.A. Inc. v. Toys “R” Us, Inc., 84. F.3d

14

1143, 1152 (9th Cir. 1996) (same). Since summary judgment must be granted on the ACPA

15

claims, it also must be granted on Petronas‟s derivative state law claim. See Dkt. No. 67 ¶ 8

16

(dismissing derivative state law claims because underlying Lanham Act claims failed as a matter

17

of law).

18

E.

THE COURT SHOULD CANCEL PETRONAS’S TRADEMARK
REGISTRATION

19
20

In support of its claims, Petronas relies on a U.S. trademark registration, Reg. No. 2969707

21

for the mark PETRONAS AND DESIGN (the “Registration”). FAC, ¶ 60. The Lanham Act gives

22

federal courts authority to cancel an invalid trademark registration. 15 U.S.C. § 1119; see also

23

Central Mfg., Inc. v. Brett, 492 F.3d 876, 883 (7th Cir. 2007) (“Where, as here, a registrant's

24

asserted rights to a mark are shown to be invalid, cancellation is not merely appropriate, it is the

25

best course”). Indeed, a court must cancel a registration after finding the underlying mark is

26

unenforceable. Gracie v. Gracie, 217 F.3d 1060, 1065-66, 1072 (9th Cir. 2000) (reversible error to

27

deny request for cancellation after verdict found mark unenforceable). Federal courts may cancel

28

registrations based on the same grounds as the U.S. Patent and Trademark Office (“USPTO”).
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D. & M. Antique Imp. Corp. v. Royal Saxe Corp., 311 F. Supp. 1261, 1268 (S.D.N.Y. 1969). One

2

such ground is abandonment. 15 U.S.C. § 1064(3). Another ground is violation of the Lanham

3

Act provision concerning trademark registrations based on international conventions. Marmark

4

Ltd. v. Nutrexpa S.A., 12 U.S.P.Q.2d 1843, 1845 (T.T.A.B. 1989). The Registration should be

5

cancelled on both grounds.

6

1.

The Registration Is Invalid Due to Abandonment

7

The Lanham Act, 15 U.S.C. § 1127, provides that a trademark is abandoned “[w]hen its use

8

has been discontinued with intent not to resume such use . . . [n]onuse for 3 consecutive years shall

9

be prima facie evidence of abandonment.” Establishing three consecutive years of non-use creates

10

a prima facie case of abandonment. 15 U.S.C. § 1127; Abdul-Jabbar v. Gen. Motors Corp., 85 F.

11

3d 407, 411 (9th Cir. 1996). As to foreign registrants, in particular, a prima facie case of

12

abandonment is established where the registrant fails to use the mark in U.S. commerce within

13

three years of registration. Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1582-83

14

(Fed Cir. 1990).

15

Under the Lanham Act, only certain uses establish a party‟s rights in the trademark and

16

prevent a finding of abandonment. Sensient Tech. Corp. v. SensoryEffects Flavor Co., 613 F.3d

17

754, 763 (8th Cir. 2010). The statute sets forth the basic requirements:

18

[A] mark shall be deemed to be in use in commerce--

19

(1) on goods when --

20

(A) it is placed in any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto, or if the nature of the
goods makes such placement impracticable, then on documents associated with the
goods or their sale . . .

21
22
23

15 U.S.C. § 1127. The first requirement – known as the “affixation” requirement – mandates that

24

the registered mark appear physically on the goods sold to consumers. The second requirement –

25

known as the “in commerce” requirement – mandates a sale or transportation of the goods in

26

United States interstate commerce or in United States commerce with a foreign nation. Id.

27
28

To satisfy these statutory requirements, a trademark specimen must be a label, tag, or
container for the goods, or a point-of-purchase display associated with the goods. 37 C.F.R. §
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2.56(b)(1). In contrast, use of a trademark on brochures, folders, or other materials that describe

2

goods and their characteristics is generally considered advertising use and fails the affixation

3

requirement. Trademark Manual of Examining Procedure (“TMEP”) § 904.03(g) (8th ed. Oct.

4

2011).

5

Here, the Registration was issued by the USPTO on July 19, 2005, covering an extremely

6

long list of goods ranging from “air conditioners” to “manure” to “flares.” Slafsky, Ex. 7.

7

However, Petronas has failed to produce evidence that it has “used” the registered PETRONAS

8

AND DESIGN mark on these goods in U.S. commerce. In particular, Petronas has failed to

9

produce evidence to demonstrate both affixation of the mark on the goods and sale or

10

transportation of the goods in United States interstate commerce or in United States commerce

11

with a foreign nation, as required by 15 U.S.C. § 1127. Nor has Petronas made any showing that

12

these requirements are impractical. Because Petronas has not satisfied the trademark-use

13

requirements of the Lanham Act, the Court should cancel the Registration due to abandonment.

14

2.

The Registration is Void for Exceeding the Scope of the Underlying
Registration

15
16

The Lanham Act allows foreign parties to obtain a U.S. trademark registration based upon

17

a mark previously registered in a country of origin that is subject to the Paris Treaty. See 15

18

U.S.C. § 1126(e) (otherwise referred to as § 44(e)). These registrants are exempted from the

19

general requirement of demonstrating U.S. trademark use before registration. TMEP § 1009.

20

However, a mark registered pursuant to § 44(e) cannot exceed the scope of protection allowed by

21

its foreign counterpart in the registrant‟s country of origin. Oromeccanica, Inc. v. Ottmar

22

Botzenhardt GmbH & Co., KG, 226 U.S.P.Q.2d 996, 999 (C.D. Cal. 1985); 4 McCarthy on

23

Trademarks and Unfair Competition § 29:12 (4th ed. 2010). In particular, a registration based on

24

§ 44(e) is invalid where the registrant claims rights to the mark for goods and services beyond

25

those listed in the underlying foreign registrations. Marmark, 12 U.S.P.Q.2d at 1845; In re

26

Lowenbrau Munchen, 175 U.S.P.Q. 178 (TTAB 1972); see also, 37 C.F.R. § 2.32(a)(6); TMEP §

27

1012. Because § 44 represents an exception to the general use requirements, this prohibition as to

28
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MEMO ISO MOTION FOR SUMMARY JUDGMENT
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1

scope is strictly enforced, and the goods identification in the underlying foreign trademark

2

registrations must be construed narrowly. Marmark Ltd. v. Nutrexpa S.A., supra.

3

Here, Petronas secured the Registration pursuant to § 44(e) based on underlying trademark

4

registrations in Malaysia (Reg. Nos. 93007563, 93007564 and 93007565). Significantly, however,

5

the goods in the Registration exceed the scope of goods in the underlying Malaysia registrations.

6

As set forth in Slafsky, Ex. 8, a number of specific goods in the Registration plainly exceed the

7

scope of the goods in the Malaysia registrations, in violation of the Lanham Act. These defects,

8

too, compel cancellation of the Registration.

9

V.

10

CONCLUSION
For the foregoing reasons Go Daddy respectfully requests that the Court grant its motion.

11
12

Dated: November 2, 2011

WILSON SONSINI GOODRICH & ROSATI
Professional Corporation

13
14
By: /s/ John L. Slafsky
JOHN L. SLAFSKY
DAVID L. LANSKY
HOLLIS BETH HIRE

15
16
17

Attorneys for Defendant/Counterclaimant
GODADDY.COM, INC.

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19
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