Petroliam Nasional Berhad v. GoDaddy.com, Inc.
Filing
124
Declaration of Nima Kelly in Support of 119 Administrative Motion to File Under Seal Motion for Partial Summary Judgment and Appendix in Support filed byGoDaddy.com, Inc.. (Attachments: # 1 Declaration Greg Schwimer ISO Plaintiff's Administrative Motion to Seal, # 2 Proposed Order, # 3 Exhibit A Part 1 to Proposed Order, # 4 Exhibit A Part 2 to Proposed Order, # 5 Exhibit A Part 3 to Proposed Order, # 6 Exhibit A Part 4 to Proposed Order, # 7 Exhibit A Part 5 to Proposed Order, # 8 Exhibit A Part 6 to Proposed Order, # 9 Exhibit A Part 7 to Proposed Order)(Related document(s) 119 ) (Slafsky, John) (Filed on 11/9/2011)
Page 18
1
2
Daddy, what does Go Daddy do?
A.
Well, the not hosted template sent out to
3
the complainant, that contains advice that if they
4
wish to address the website content, that they need
5
to address it to the hosting provider.
6
advises them that if this is a domain name specific
7
issue, that they would need to refer to the Uniform
8
Domain Name Dispute Resolution Policy.
9
Q.
Okay.
And it also
Now, if Go Daddy determines that a
10
website is not hosted, will Go Daddy go through the
11
process in Section 1.2 of this policy of determining
12
if the trademark is registered?
13
A.
No.
14
Q.
Okay.
And Go Daddy also if it determines
15
that a website is not hosted at Go Daddy, it will not
16
go through the process 1.3 of determining if the
17
claim infringement is identifiable?
18
A.
Correct, yes.
19
Q.
And it also won't go through the process
20
in 1.4 of determining if the claim is complete?
21
A.
Yes.
22
Q.
Okay.
23
And then it won't go through step
1.5 of opening a valid trademark claim?
24
A.
Correct.
25
Q.
Okay.
So with respect to complaints
APP178
Page 19
1
regarding websites that Go Daddy determines are not
2
hosted by Go Daddy, Go Daddy doesn't investigate
3
whether or not there is identifiable trademark
4
infringement; is that correct?
5
6
MR. LANSKY:
Object to the form.
Asked
and answered.
7
THE WITNESS:
Since it's not actionable,
8
we don't make a determination.
9
BY MR. CLARK:
10
Q.
Okay.
So if a website is not hosted at
11
Go Daddy, there very well may be trademark
12
infringement; is that correct?
13
MR. LANSKY:
14
THE WITNESS:
Object to the form.
There could be something
15
that would be identified by the hosting company as
16
trademark infringement, but we don't make a
17
determination as to whether or not that it exists.
18
We simply give them the proper channels to pursue the
19
issue.
20
BY MR. CLARK:
21
Q.
Okay.
And do you know why Go Daddy will
22
not -- Go Daddy doesn't carry out any of these steps
23
regarding trademark infringement if the website is
24
not hosted by Go Daddy?
25
MR. LANSKY:
Object to the form.
APP179
Page 28
1
A.
Yes.
2
Q.
So Go Daddy wouldn't have -- in
3
evaluating the complaint for petronastowers.net, Go
4
Daddy wouldn't have considered the domain name
5
petronastower.net had been ordered transferred by a
6
court?
7
A.
No, because it would have been the same
8
thing where we would have followed our standard
9
operating procedure.
10
Q.
And it wouldn't have mattered that the
11
domain name petronastower.net was transferred by a
12
court because the court found trademark infringement?
13
A.
14
15
16
No.
MR. LANSKY:
Object to the form.
BY MR. CLARK:
Q.
And it wouldn't matter that the
17
petronastower.net domain name listed the same
18
registrant?
19
MR. LANSKY:
20
THE WITNESS:
21
22
23
Object to the form.
No.
BY MR. CLARK:
Q.
And that it was forwarding to the same
website?
24
MR. LANSKY:
25
THE WITNESS:
Object to the form.
No.
APP180
Page 51
1
pretty steady.
2
Q.
Okay.
And do you have any idea how many
3
trademark infringement claims Go Daddy receives each
4
year?
5
A.
I don't know a specific number, but it is
6
in the thousands.
7
Q.
And of those claims -- I'm sorry if you
8
already told me this, but what's your estimate of how
9
many of those relate to hosted accounts?
10
A.
Actionable claims are in the hundreds.
11
Q.
Okay.
And of the actionable claims, give
12
a sense of what percentage of those actually result
13
in a hosting account being cancelled or suspended?
14
A.
It would be suspended and any actionable
15
claim that we get a valid complete complaint for
16
we're going to take action on.
17
majority.
18
number.
19
Q.
So a majority, vast
I couldn't really give you a specific
And when you have the -- when there is a
20
valid trademark claim for a hosted website, the Go
21
Daddy customer has the opportunity to provide a
22
counter-notification; is that correct?
23
A.
Yes.
24
Q.
And can you describe what a
25
counter-notification is?
APP181
Page 52
1
A.
Yes.
Counter-notification is actually on
2
Exhibit 16.
3
they have to provide 1A through 1D.
4
1A through 1D, then in 10 business days if we don't
5
receive anything from the complainant to prevent us
6
from reinstating the site or removing the suspension,
7
then the suspension is removed.
8
Q.
And basically what they have to do is
Okay.
If they provide
And do you have a sense of in what
9
percentage of the cases where an account is suspended
10
the suspension is removed after counter-notification?
11
A.
It's extremely low.
12
Q.
In implementing this trademark policy for
13
hosted content, does it require that Go Daddy
14
actually determine whether or not a particular hosted
15
website is infringing a trademark?
16
A.
Can you clarify that a little?
17
Q.
In other words, is what Go Daddy's doing
18
under this trademark policy, is it actually looking
19
at complaints and determining whether or not there
20
actually is infringement or something else?
21
MR. LANSKY:
Object to the form.
22
THE WITNESS:
We're determining whether
23
or not we've got all the elements that we need in
24
order to take action.
25
actually view the trademark.
We're determining that we can
We're determining that
APP182
From:
Sent:
To:
Subject:
Attach:
tradem
arkclaims@godaddy
.com
9:17AM
Wednesday, 14,2010
July
ndi
com
domai sputes@godaddy.
Claims]
[FWD: Trademark
2UA-7-7 PTO RegPETRONAS.pdf;
2009-12-9 DaddyTrademark policy.pdf;
Infr
Go
2010-7-7Signed
Request Trademark
for
Claims.pdf
DearDisputes,
This is the emailwe received PETRONASTOWERS.NET # 47A158.
for
claim
Thanks,
Rod
Message
Original
Subject:
Trademark
Claims
From:"perryclark"
Date:Wed,July07, 20102:38 pm
>
To:
Trademarks Trademark
(TESS)
Electronic
SearchSysitem
IESS was/asfupdated WedJul 7 03:54:50
on
EDT2010
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logout
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lto record:
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of
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***off
Word Mark
Goods and
Services
PETRONAS
lC 001. US 001 005 006 010 026 046. G & S: Chemicals
and petrochemicals use in the
for
manufacture pharmaceuticals,
packaging,
of
cosmetics,
detergents,
wire and cable installation,
cassettetapes, pipes,toys, films,floorings,
syntheticrubber,paintsand coatings,adhesives,
fuel
additivesand lubricants,
textiles,agriculture,
electrical
and electronic
components,
parts,
automotive
aerospaceand aviation,buildingand construction
plastics,
materials,
foods, and diagnostic
equipment;
chemicaland petrochemical the natureof methanol,ethylene,methyltertiarybutyl ether (MTBE),
in
polyvinyl
polyethylene,
polypropylene,
vinylchloride
monomer,
propylene,
chloride,
ethylbenzene,
and
styrenemonomerall for use in industrial,
forestry,agricultural,
horticultural, scientific
and
applications;
photographic
chemicals;
artificial
and syntheticresinsfor use in the manufacture fibers,polymers
of
plasticmolding
and coatings,
and moldingcompounds;
compounds use in plasticextrusion
for
plasticmoldingcompounds use the manufacture moldedplasticarticlesand plastic
operations
for
of
sheetsand films;composts;manures;fertilizers agricultural
for
and domesticuse; glue for industrial
purposes,adhesivesfor generalindustrial
use, contactcements;gasesfor heating,lighting,
steam
generating,
cooking,
refrigeration,
dryingand ventilating industrial in liquidand gaseous
for
use
forms;
oil dispersants;
chemicals separating
for
oils;hydraulic
fluidsfor generaluse;chemical
additives
for
gasoline
use in the manufacture fuels,lubricants,
of
and drilling
lubricants;
drilling
mudsfor use in oil
well drilling,coolantsfor vehicleengines,heat transferfluicls industrial
for
use, hydraulic
fluidsfor
generaluse, acidulated
waterfor recharging
accumulators batteries;
and
additives use
chemical
for
with internalcombustion
engines.chemicaladditives furel
for
savingtreatments,
catalysts use in the
for
oil processingindustry,oil for preservation masonry
of
lC 004. US 001 006 015. G & S: Transmission
fluids,cuttinrg for industrial
oil
Crudeoil,
metalworking,
naturalgasoline,
gasoline;
fuel oil and generalpurposegreases, purposelubricants;
all
fuel gas;fuel
oils;fuel alcohol;
dieselfuel;gas; gasoline lubricant;
as
kerosene,
unleaded
fuel;oil gas; paraffin;
petroleum;
petroleum
gaseousand solidform,dust lyingand absorbing
ether,fuelsin liquid,
APP198
govib r/showfield? doc&state-4 1A:9jc6p3 .2
http://tes .uspto.
i
s2
F
0
.2
71712010
GD-001338
'
Trademark
ElectronicSearch
(TESS)
System
Page2 of 2
jelly
compositions useon unpaved
for
petroleum for
roads;
non-chemical
additives oilsandfuels;
for
purposes,
petrochemicals usein fuel,
industrial
tallow,
automatic
transmission
fluids;
rnethanol
for
petroleum
based
dustsuppressing
compositions usein manufacture
for
lC 011. US 013021023031034.G & S:Air conditioners, distillafion flares, andpetrol
gas
water
units,
purposes; regulators, exchangers, pumps,
gas
burners industrial
pasteurizers usein
for
heat
heat
for
foodandbeverage
industry;
electric
radiators for motors engines,
not
or
solarcollectors heating
for
solarfilrnaces,
waterfilters
Mark
Drawing
Code
Design
Search
Code
Garial
(3)DESIGN
PLUS
WORDS,
LETTERS,
AND/OR
NUMBEIRS
(a
01.15.08Raindrop single
(a
drop);
Single
drop(rain,
tear,etc.);
Teardrop single
drop)
26.03.17 Concentric
ovals;
Concentric
ovalsandovals
ovals;
within
Ovals
within
ovals;
Ovals,
concentric
26.03.21 Ovals
thatarecompletely partially
or
shaded
26.03.28Miscellaneous
designs overall shape,
with
oval
frncluding
amoeba-like
shapes irregular
and
(miscellaneous
ovals;
Ovalshape
overall
shape)
ffi'#;".
78100185
Filing Date
December
28,2001
44E
9.Ylt=t
rilrng E asts
!.1!oinal
Filing
Basis
Published
for
Opposition
Registration
Number
Registration
Date
Owner
of
IttomeY
Record
Description
of Mark
]-vReot
Mark
Register
Live/Dead
lndicator
1B:44E
I H''
August 24,2004
ZSO'TOT
'vv
Juru1g, zoos
(REGISTRANT)
PetroliamNasionalBerhadCORPORATION
MALAYSIAPetronasTwin Towers,
Tower 1 Kuala LumpurCity Centre50088 Kuala LumpurMALAYSIA
BrianE. Banner
The mark consistsof The designportionof the markto the right of the word "PETRONAS" the
is
fanciful
representation a drop of oil inthe colorgreenand greenis claimedas a partof the mark.
of
TRADEMARK
I I \r
PRINCIPAL
LIVE
ffiffiffiffiffiffiffi,ffiffiffiffi
ffiffiffi]
ffiffi
SEARGH eBUSINESSHELPI PRIVAGYPoLIcY
l.HoME I SITEINDEXI
I
I
APP199
http://tess2.uspto.gov/bin/showfield?Fdoc&state=4010:91c6p3.2.2
7nA0n
GD-001339
Printable
Trademark
ClaimsRequest Form
Fax
Page1 of 2
PRINT
REQUESTFOR TRADEMARK CLAIMS
Trademark
TrackingID: 470158
Add your identification
and E-mail this form to trademarkl4i4qt@sodaddy.com
or FAX
form to Trademark
Department
at 48A-247-4137
The trademark department cannot process your request without the 'Trademark Claims Tracking
ID' listed at the top.
If you (the "Complaining Party") would like to submit a trademarkclaim for violation of a mark on
which the Complaining Party holds a valid, registeredtrademarkor seryice mark, GoDaddy.com, Inc.
requeststhat the Complaining Party substantiate
such claim by providing GoDaddy.com, Inc. with the
following information via email to trademarkclaims@godaddy.com.
The words "Trademark Claims"
should appeaxin the subject line. The Complaining Party should understandthat GoDaddy.com, Inc., an
ICANN accreditedregistrar,and its customersare bound by the UDRP. Nothing in this Policy should be
oonstruedto supersede
the UDRP, nor the obligation of GoDaddy.com, Inc, and its customersto abide by
it in the context of domain name disputes.
Domain Information:
Domain Name:
PETRONASTOWERS.NET
Contact Information:
Requestor First Name:
Perry
Requestor Last Name:
Clark
perry @perryclarklaw.com
Phone Number:
650 248 5817
E-mail:
Trademark Regiskation#.
Additional
2969707
Info rm ation :
Pleaseimmediately disable the domain name "petronastowers.net,"
whioh infringes the trademark rights
of my client, Petronas. Please do not hesistateto contact me with any questions. Best, Perry Law Offices
of Perry R. Clark 3457 Cowper St. Palo Alto, CA 94306 Tel.: 650 248 5817
To be consideredeffective, a notification of a claimed hademark violation must be provided via email to
GoDaddy.com, Inc. and must include the following information:
1. Sufficient evidence that the party posting the trademark that is claimed to be infringing is a
GoDaddy.com, Inc. customer.
2. The trademark, service marh trade dress,name, or other indicia of origin ("mark") that is claimed
to be infringed,
3. The name, post office addressand telephonenumber of the orvner of the mark identified above.
4. The goods and/or servicescovered by or offered under the marh identified in B above.
5. The date of first use of the mark identified above.
6, The date of first use in interstate commerce of the mark identified above.
7 . The mark the Complaining Parly believesis an infringement of its mark.
8. The goods andl or servicescovered by or offered under the mark claimed to be infringing.
9. The precise location of the mark that is claimed to be infringing, including electronic mail
address,etc. A good faith certification, signed under penalty of perjury stating:
l. The mark [identi$ mark] infringes the rights of another party,
2. The name of such said party,
3. The mark [identifu mark] being infringed, and
4. That use of the mark [identifu mark] claimed to be infringing at issue is not defensible.
Upon receipt of the appropriateinformation identified in Section 1 above,for trademarkclaims, GoDaddy.com,
Inc. will initiate an investigation.While GoDaddy.corrg
Inc. is investigatingtheclaim, GoDaddy,com,lnc., at its
sole discretionand without any legal obligation to do so, may notify the postingparty it will lock down the
postingparty's domain name(s),redirectthe postingparty's DNS, and/orif it is solely storedon a GoDaddy.conr,
lnc. server,temporarily remove or deny access the challenged
to
material.
If GoDaddy.com,lnc. concludesthat the ComplainingParty has raiseda legitimatetrademarkclaim, it may, at its
sole discretionand without any legal obligationto do so, continueto suspend postingpa.rty's
the
GoDaddy.com,
lnc. accountand/or if it is solely storedon a GoDaddy.com,[nc. seryer,deny access the challengedmaterial.If
to
GoDaddy.com,Inc. concludes
that the ComplainingPafty has not raiseda legitimateclaim or if it is not clear
whetherthe Complaining Party hasraiseda legitimateclaim, GoDaddy.com,Inc. will restoreaccess the
to
challengedmaterial.
Notificafion to GoDaddy.com,Inc. customers
and accountholders:It is GoDaddy.com,Inc. 's policy to provide
for the terminatioq in appropriate
circumstances, GoDaddy.corn,
of
Inc. customers
and accguntholderswho are
repeat infringers of copyrighted works, trademarks or any other intellectual property.
Signed:
Perry
Clark
l-r tJtE
Date:
Printed Name:
APP200
https://supportcenter.godaddy.com/DomainServices/PrintableTMtrorm.aspx?id=chldpjchyid...
71712010
CONFIDENTIAL
GD-001340
Printable
Trademark
ClaimsRequest Form
Fax
Page2 of 2
APP201
hups://supportcenter.godaddy.com/DomainServices/PrintableTMForm.aspx?id=chldpjchyid.
.. 71712010
CONFIDENTIAL
GD-001341
From:
Sent:
To:
Subject:
tradem
arkclaims@godaddy.
com
Wednesday, 14,2010
9:14AM
July
domaindi
sputes@godaddy.
com
[FWD: RE: TRADEMARK CLAIMS: Notification of TrademarkInfringementby
DomainName "petronastower.
net"]
DearDisputes,
Thisis the replywe sentfor petronastower.net
claim# 415576.
Thanks,
Rod
Message
Original
Subject:RE:TRADEMARK
Notification Trademark
CLAIMS:
Infringement
of
by Domain
Name"petronastower.net"
From
:
Date:Wed,December
t6,2009 L0:21am
To: "Perry
Clark"
DearPerryClark,
Althoughthe domainPETRONASTOWER.NET
is registered
throughour company, domainis
the
forwarding a websitethat is hosted
to
Any
regarding contentof the websitewill
elsewhere. issues
the
needto be addressed the ownerof the siteeitherdirectly,or to the hostingprovider.
to
We canonly process
infringement
claimsof trademark
that
against contentof websites we host.
the
ICANN, the managing
prohibitsdomain
body of internet,domainnameregistrars,
specifically
registrars
from becoming
involvedin disputes
in
overdomainownership their Uniform DomainName
DisputeResolution
Policy Any disputes
overthe ownership wordingof the domainnameitself will
or
needto be senteitherto the owner,or throughan arbitrationforum, or the local court system.
Please freeto contact if we canprovidefurtherassistance.
feel
us
Regards,
DomainServices
Go Daddy Software,Inc.
Message
Original
Subject:
TRADEMARK
Notification Trademark
CLAIMS:
Infringement
of
by
Domain
Name"petronastower.net"
From:"Perry
Clark"
Date:Wed,December
16,200910:09am
To: Tradema
rkClams@qodaddy.com
i
Pursuant Section of the"GoDaddy
to
A(2)
Trademark
and/or
Copyright
lnfringement
APP202
CONFIDENTIAL
GD-001312
(attached), emailservesas notification a claimfor trademark
Policy"
this
of
infringement.
Attached
to
thisemailplease the "Request Trademark
find
for
Claims"
required Section
by
A(1)of the agreement.
The "Trademark
TrackinglD" is 415576.
Thefollowing
information provided the orderit is listedin Section
is
in
A(2) of the agreement:
Evidence the infringer the trademark a Go Daddycustomer that WHOISliststhe following
that
of
is
is
information respect the domainname"petronastower.net":
with
to
Heiko
Schoenekess
BPM 195226
372 Old Street
London,
London
EClV 9AU
United
Kingdom
Registered
through:
GoDaddv.com,
Inc.
Domain
Name:
PETRONASTOWER.NET
Created 08-May-03
on:
Expires
on:08-May-10
LastUpdated 02-May-09
on:
The infringed
trademark U.S.Trademark
is
Registration
"PETRONAS."
Number2969707
See
attached
U.S.Patent
and Trademark
OfficeRecord
The markapplies at least, UnitedStates.The markis alsoregistered othercountries.
in,
the
in
Theowner the markis Petroliam
of
Nasional
Berhad,
Petronas
TwinTowers,
Tower1 KualaLumpur
CityCentre
50088KualaLumpur
MALAYSIA.
Thegoodsandservices
covered the markare:Chemicals petrochemicals use in the
by
and
for
manufacture pharmaceuticals,
packaging, and cableinstallation,
of
cosmetics,
detergents,
wire
cassette
tapes,pipes,
paintsand coatings,
toys,films,floorings,
synthetic
rubber,
adhesives,
fuel
additives lubricants,
and
parts,
textiles,
agriculture,
electrical electronic
and
components,
automotive
aerospace aviation,
and
plastics,
building construction
and
materials,
foods,
anddiagnostic
equipment;
chemical petrochemicalthe nature methanol,
and
in
of
ethylene,
methyl
tertiary
butylether(MTBE),
polyvinyl
polyethylene,
vinylchloride
polypropylene,
propylene,
monomer,
chloride,
ethylbenzene,
and
styrene
monomer for use in industrial,
all
forestry,
agricultural,
horticultural, scientific
and
applications;
photographic
chemicals;
artificial synthetic
and
resins use in the manufacture fibers,polymers
for
of
plastic
andcoatings, molding
and
compounds;
molding
compounds usein plastic
for
extrusion
plastic
operations
plastic
molding
compounds usethe manufacture molded
for
of
articles
and plastic
sheets
andfilms;
composts;
manures;
fertilizers agricultural domestic
for
and
use;gluefor industrial
purposes,
gasesfor heating,
adhesives general
for
industrial contact
use,
cements;
lighting,
steam
generating,
cooking,
refrigeration,
drying
andventilating industrial in liquid
for
use
andgaseous
forms;
oildispersants;
chemicals separating hydraulic
for
oils;
fluids general
for
use;chemical
additives
for
gasoline drilling
usein the manufacture fuels,lubricants,
of
and
lubricants;
drilling
mudsfor use in oil
welldrilling,
coolants vehicle
for
engines,
heattransfer
fluids industrial hydraulic
for
use,
fluids
for
general
use,acidulated
waterfor recharging
accumulators batteries;
and
chemical
additives use
for
with internal
combustion
engines.
chemical
additives fuelsavingtreatments,
for
catalysts use in the
for
oil processing
industry, for preservation masonry,
oil
of
transmission
fluids,cutting for industrial
oil
gasoline, oil andgeneral
metalworking,
purpose
Crudeoil,natural
greases, purpose
fuel
all
lubricants;
gasoline; gas;fueloils;fuelalcohol;
fuel
diesel
fuel;gas;gasoline lubricant;
as
kerosene,
unleaded
petroleum;
petroleum
fuel;oilgas;paraffin;
gaseous solidform,dustlyingand
ether,
fuelsin liquid,
and
absorbing
compositions useon unpaved
for
roads;
non-chemical
additives oilsandfuels;petroleum
for
jellyfor industrial
purposes,
tallow,
petrochemicals usein
automatlc
transmission
methanol
fluids;
for
fuel,petroleum
baseddustsuppressing
compositions use in manufacture, conditioners,
for
air
water
gas and petrolburners industrial
distillation
units,flares,
gas
purposes; regulators,
for
heatexchangers,
pasteurizers use in foodand beverage
heatpumps,
for
industry;
electric
radiators for motors
not
or
engines,
solarcollectors heating
for
solarfurnaces,
waterfilters.
The markhas beenusedin interstate
commerce
sinceat least2001.
It is unclear
whatgoodsor services beingofferedunderthe markthat is infringed.
are
The precise
location the infringing
of
markis "petronastower.net."
APP203
CONFIDENTIAL
GD-001313
Underpenalty perjury, certifir goodfaiththatthe "petronastower.net"
of
I
in
infringes trademark
the
"Petronas,"
whichis ownedby Petronas the use of the markin "petronastower.net"
and
is not
defensible.
BestRegards,
PerryGlark
KIRKLAND ELLISLLP
&
950PageMillRoad
PaloAlto,CA 94303
Office:
650 859 7070
Mobile: 2485817
650
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