Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 128

RESPONSE (re 120 MOTION for Partial Summary Judgment NOTICE ONLY: MEMORANDUM AND OTHER DOCUMENTS IN SUPPORT FILED UNDER SEAL ) Memorandum of Points and Authorities in Opposition to Plaintiff's Motion for Partial Summary Judgment filed byGoDaddy.com, Inc.. (Attachments: # 1 Proposed Order)(Slafsky, John) (Filed on 11/16/2011)

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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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DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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CASE NO.: 09-CV-5939 PJH

MEMORANDUM OF POINTS AND
AUTHORITIES IN OPPOSITION
TO PLAINTIFF’S MOTION FOR
PARTIAL 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 ..........................................................................................................ii

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

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MEMORANDUM OF POINTS AND AUTHORITIES ................................................................ 1

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I.

INTRODUCTION ............................................................................................................... 1

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II.

COUNTER-STATEMENT OF FACTS ............................................................................. 3

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A.

GO DADDY DOES NOT PROVIDE FORWARDING FOR DOMAINS
REGISTERED WITH OTHER REGISTRARS ..................................................... 4

B.

THE DISPUTED DOMAIN HAD BEEN FORWARDED FOR YEARS
BEFORE IT WAS REGISTERED WITH GO DADDY ........................................ 5

C.

GO DADDY ACTED PROMPTLY AFTER BEING NOTIFIED OF THE
DISPUTED DOMAIN ............................................................................................ 5

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III.

ARGUMENT ...................................................................................................................... 7

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A.

CONTRIBUTORY LIABILITY DOES NOT APPLY TO A DOMAIN
NAME REGISTRAR MERELY PROVIDING DOMAIN FORWARDING
SERVICES .............................................................................................................. 7

B.

GO DADDY IS IMMUNE FROM CONTRIBUTORY LIABILITY
UNDER THE ACPA AND ENSUING CASE LAW ........................................... 10

C.

PETRONAS HAS FAILED TO ADDUCE SUFFICIENT EVIDENCE TO
SUPPORT ITS CONTRIBUTORY CYBERSQUATTING CLAIM ................... 15

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1.

If A Contributory Cybersquatting Claim Could Be Asserted, A
Heightened Showing of “Exceptional Circumstances” Would Be
Required .................................................................................................... 15

2.

There Is No Finding of Direct Cybersquatting .......................................... 16

3.

There Is No Evidence That Go Daddy Monitored and Controlled
The Instrumentality of Cybersquatting ..................................................... 18

4.

Go Daddy Did Not Have Knowledge That the Registrant Was
Cybersquatting .......................................................................................... 19

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IV.

CONCLUSION ................................................................................................................. 21

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DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL 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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American Traffic Solutions, Inc. v. Redflex Traffic Sys. Inc.,
No. cv-08-2051-PHX-FJM 2009 WL 775104 (D. Ariz. Mar.20, 2009) ........................... 14

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6

Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986) .......................................................................................................... 15

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Anlin Indus., Inc. v. Burgess,
301 F. App‟x. 745 (9th Cir. 2008)..................................................................................... 16

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9

Baidu, Inc. v. Register.com, Inc.,
760 F. Supp. 2d 312 (S.D.N.Y. 2010) ............................................................................... 11

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Competition Specialties, Inc. v. Competition Specialties, Inc.,
87 F. App‟x. 38 (9th Cir. 2004)......................................................................................... 18

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Fare Deals, Ltd. v. World Choice Travel.com, Inc.,
180 F. Supp. 2d 678 (D. Md. 2001) .................................................................................. 20

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Fonovisa Inc. v. Cherry Auction, Inc.,
76 F.3d 259 (9th Cir. 1996) ................................................................................................. 8

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15
16
17
18

Ford Motor Co. v. Greatdomains.com, Inc.,
177 F. Supp. 2d 635 (E.D. Mich. 2001) ...................................................................... 16, 19
Georgia-Pacific Consumer Prod. LP v. Myers Supply, Inc.,
No. 6:08-cv-6086, 2009 WL 2192721 (W.D. Ark. July 23, 2009),
aff’d 621 F.3d 771 (8th Cir. 2010) .................................................................................... 16
Halo Mgmt., LLC v. Interland, Inc.,
308 F. Supp. 2d 1019 (N.D. Cal. 2003) ............................................................................ 13

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20

Hard Rock Cafe Licensing Corp. v. Concession Serv., Inc.,
955 F.2d 1143 (7th Cir. 1992) ......................................................................................... 7, 8

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Interstellar Starship Servs., Ltd. v. Epix, Inc.,
304 F.3d 936 (9th Cir. 2002) ....................................................................................... 16, 17

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Inwood Labs., Inc. v. Ives Labs., Inc.,
456 U.S. 844 (1982) ................................................................................................... passim

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K.S.R. XRay Supplies, Inc. v. Southeastern X-Ray, Inc.,
No. 09-81454-CIV, 2010 WL 4317026 (S.D. Fla. Oct. 25, 2010) .................................... 13

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26

LCW Auto. Corp. v. Restivo Enters.,
No. SA–04–CA–0361–XR, 2004 WL 2203440 (W.D. Tex. Sept. 24, 2004) ................... 13

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Lockheed Martin Corp. v. Network Solutions, Inc.,
141 F. Supp. 2d 648 (N.D. Tex. 2001) ( “Lockheed II”)............................................. 11, 21

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DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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

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3

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc.,
--F.3d--, 2011 WL 4014320 (9th Cir. Sept. 9, 2011) .................................................... 8, 15

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Masson v. New Yorker Magazine, Inc.,
501 U.S. 496 (1991) .......................................................................................................... 15

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Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574 (1986) .......................................................................................................... 15

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McSpadden v. Caron,
No. 03–CV–6285 CJS, 2004 WL 2108394 (W.D.N.Y. Sept. 20, 2004) ........................... 13

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Meyer v. Holley,
537 U.S. 280 (2003) ............................................................................................................ 9

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Microsoft Corp. v. Shah,
No. C10-0653 RSM, 2011 WL 108954 (W.D. Wash. Jan. 12, 2011)......................... 16, 18

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Perfect 10, Inc. v. Visa Int’l Serv., Ass’n,
494 F.3d 788 (9th Cir. 2007) ......................................................................................... 8, 19
Solid Host, NL v. NameCheap, Inc.,
652 F. Supp. 2d. 1092 (C.D. Cal. 2009) ..................................................................... passim
Super-Krete Int’l, Inc. v. Sadleir,
712 F. Supp. 2d. 1023 (C.D. Cal. 2010) ............................................................................ 13
T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass’n,
809 F.2d 626 (9th Cir. 1987) ............................................................................................. 15

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Tiffany Inc. v. eBay Inc.,
600 F.3d 93 (2d Cir. 2010) ...................................................................................... 8, 19, 20

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United States v. Patterson,
230 F.3d 1168 (9th Cir.2000) ............................................................................................ 14

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21

Wallace v. Countrywide Home Loans, Inc.,
No. SACV 08-1463 AG (MLGx), 2009 WL 4349534
(C.D. Cal. Nov. 23, 2009) ................................................................................................. 14

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STATUTES

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15 U.S.C. § 1114(2)(D)(iii) ........................................................................................................... 11

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15 U.S.C. § 1114 ............................................................................................................................. 1

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15 U.S.C. § 1125 ....................................................................................................................... 1, 17

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

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15 U.S.C. § 1125(d)(1)(A)(i) ........................................................................................................ 18
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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15 U.S.C. § 1125(d)(1)(B)(ii) ........................................................................................................ 17

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RULES

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Fed. R. Civ. P 56(a) ....................................................................................................................... 15

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Fed. R. Civ. P. 56(c)(1)(A).............................................................................................................. 3

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MISCELLANEOUS

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Domain Names for Dummies, by GreatDomains.com with Susan Wels at 56 (2001) ................. 13

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Restatement (Second) of Torts § 877(c) & cmt. D (1979) .............................................................. 8

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S. Rep. 106-140 (Aug. 5, 1999) ................................................................................................ 9, 11

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DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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STATEMENT OF ISSUES TO BE DECIDED

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1.

2.

If a claim exists for contributory cybersquatting under the circumstances of this

case?

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Does a claim for contributory cybersquatting exist under the circumstances of this

case, what is the standard to be applied?

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3.

Has Petronas demonstrated that domain name forwarding is sufficiently distinct

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from the routing service provided by all domain name registrars to take it outside of the

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immunity for registrars under the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. §§

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1114 and 1125 (“ACPA”), and ensuing case law?

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4.

Does the undisputed evidence demonstrate that the non-party registrant of the

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domain name <petronastowers.net> (the “Disputed Domain”) registered or used the Disputed

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Domain with a bad faith intent to profit from Petronas‟s trademark?

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5.

Assuming the non-party registrant engaged in cybersquatting, does the undisputed

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evidence demonstrate that the domain name registrar, Go Daddy, exercised direct monitoring and

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control over the means of cybersquatting?

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6.

circumstances sufficient to impute knowledge of cybersquatting to Go Daddy?

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Did Petronas‟s notice of alleged trademark infringement amount to exceptional

MEMORANDUM OF POINTS AND AUTHORITIES
I.

INTRODUCTION
Petronas seeks summary judgment on a single claim that, under the circumstances, does not

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exist. No defendant has ever been held liable for “contributory cybersquatting.” Far from the

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“well-established” case law Petronas claims to rely upon, there is not a single appellate-level

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decision recognizing the existence of a “contributory cybersquatting” claim, and only a few district

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courts have even considered such a claim at the pleading stage. In the context of trademark

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infringement, a proper reading of Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982), and

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its progeny makes clear that a claim for contributory liability exists only in the limited

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circumstances where a defendant intentionally induced another to infringe, continued to supply a

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product to one whom the defendant knew was engaged in infringement, or continued to supply
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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access to a venue to one whom the defendant knew or should have known was using the venue to

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sell infringing products. Petronas boldly seeks to extend this limited principle of secondary

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liability to a new realm, cybersquatting, but the facts of this lawsuit do not support any such

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extension of U.S. law.

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In particular, Go Daddy‟s conduct falls into none of the Inwood Labs categories – Go

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Daddy is not alleged to have induced infringement, it supplies a service not a product, and it does

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not supply a marketplace where infringing products are sold. Because Congress enacted the

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underlying statute, the ACPA, against the backdrop of limited circumstances permitting

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secondary liability, and Congress could have but did not include an expanded claim for

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contributory cybersquatting within the ACPA itself, it must be presumed that Congress did not

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intend to extend such liability. It would thus be unprecedented and improper for this Court to

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expand the scope of secondary liability in the aggressive manner sought by Petronas. It also

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would be contrary to the seminal holding of the Ninth Circuit in Lockheed Martin Corp. v.

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Network Solutions, Inc., 194 F.3d 980 (9th Cir. 1999) (“Lockheed”), that, as this Court has

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already recognized, a domain name registrar offering registration and routing services is not

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subject to a claim for contributory infringement.

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Petronas‟s motion also must be denied because Go Daddy‟s actions fall within the

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immunity provided to domain name registrars under the ACPA and the ensuing case law.

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Petronas‟s emphasis in its papers on the distinction between registration and other basic registrar

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services is inapposite, as both categories are protected by the ACPA and related case law. The

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Ninth Circuit, in the Lockheed opinion that Congress intended to codify when it enacted the

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ACPA, has already concluded that domain name routing is a basic registrar service for which

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secondary liability will not lie. In this case, the undisputed evidence establishes that the service

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provided by Go Daddy – domain name forwarding – is merely a form of domain routing, and just

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like any other form of routing, is a basic registrar service shielded from liability.

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Finally, even if Petronas‟s novel claim for contributory cybersquatting were to apply to

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the facts of this case, and even if the Court were to conclude that the registrar immunity does not

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apply, Petronas‟s narrowly targeted motion still would fail for lack of proof. Despite years of
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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litigation and extensive discovery, Petronas has wholly failed to come forward with evidence

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entitling it to judgment. The proof presented by Petronas simply fails to establish: (i) that the

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registrant registered or used the Disputed Domain with a bad faith intent to profit from

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Petronas‟s trademark; (ii) that Go Daddy exercised direct monitoring and control over the

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registrant‟s allegedly unlawful conduct; or (iii) that the notice of alleged infringement provided

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by Petronas created the type of “exceptional circumstances” necessary to impute knowledge of

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cybersquatting to Go Daddy. A failure of proof on any one of these elements dooms Petronas‟s

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motion; here, all three fail.

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II.

COUNTER-STATEMENT OF FACTS

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Although Petronas‟s First Amended Complaint asserts three claims based on registration

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and forwarding of two different domain names, its Motion for Summary Judgment is limited to a

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single claim of contributory cybersquatting relating to a single domain name. The motion is

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directed at Go Daddy‟s failure to disable its forwarding service for the Disputed Domain between

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the time when Go Daddy received a notice from Petronas and the time, approximately two

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months later, when Go Daddy complied with an Order to transfer the Disputed Domain.

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Counsel for Petronas sent an email identifying the Disputed Domain to Go Daddy‟s

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counsel in mid-June, 2010 in the context of settlement discussions. APP155.1 Go Daddy‟s

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counsel responded the same day, pointing Petronas to the Uniform Dispute Resolution Policy

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(“UDRP”). Id. Petronas first submitted a trademark claim regarding the Disputed Domain to Go

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Daddy on July 7, 2010. APP092-95. Go Daddy responded the next day, indicating that because

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the website was not hosted by Go Daddy and because the Internet Corporation for Assigned

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Names and Numbers (“ICANN”) and the UDRP prohibited registrars from becoming involved in

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domain name disputes, Petronas would have to pursue the dispute with the registrant through

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arbitration or the local court system. APP091. Petronas filed a Lanham Act in rem action

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Citations to Plaintiff‟s Appendix of Fed. R. Civ. P. 56(C)(1)(A) Materials In Support of
Motion For Partial Summary Judgment will be in the form “APP___.” Citations to
Memorandum of Points and Authorities in support of its Motion for Partial Summary Judgment
will be in the form “Pl. Br. at __.” Citations to declarations will be in the form “[Declarant], [¶
or Ex.] __.” Citations to deposition testimony will be in the form ([Witness], at __)”.
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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against the Disputed Domain on July 12, 2010 (APP077-83) and moved for an order transferring

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the domain name on August 10, 2010 (APP070-86). The order was granted on August 27, 2010

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(APP066-69) and Go Daddy transferred the Disputed Domain to Petronas three days later, on

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August 30, 2010 (Hanyen, ¶ 27).

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Also pertinent to Petronas‟s motion are the factual issues below: whether domain

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forwarding is a basic service offered by Go Daddy in its role as a domain name registrar;

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whether the Disputed Domain first became linked to a pornographic website following transfer

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from another registrar to Go Daddy; and whether Go Daddy ignored Petronas‟s notice regarding

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the Disputed Domain. As to these issues, Petronas makes factual assertions that are

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unsupported – and are, in fact, contradicted – by the evidence of record. Rather than creating

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“issues of fact” precluding summary judgment, these deficiencies expose the absence of

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evidence supporting Petronas‟s claims.

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A.

GO DADDY DOES NOT PROVIDE FORWARDING FOR DOMAINS
REGISTERED WITH OTHER REGISTRARS

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Seeking to avoid the broad registrar immunity afforded by the ACPA, Petronas argues

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that forwarding is somehow unrelated to domain name registration or maintenance because Go

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Daddy purportedly offers forwarding to hosting customers who have their domain names

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registered elsewhere. See Pl. Br. at 4. This is simply wrong and is unsupported by evidence. To

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the contrary, the evidence establishes unequivocally that Go Daddy‟s forwarding service is only

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available for domains registered with Go Daddy. See Munson, ¶ 10 (“Go Daddy can only

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provide domain name forwarding services to domain names for which Go Daddy is the

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registrar”); Lansky, Ex. 1 (Roling, 48:14-18 (confirming that “hosting customers whose domain

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names are registered elsewhere . . . cannot use Go Daddy‟s domain name forwarding service”)).

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The documents cited by Petronas are not contradictory. Petronas notes that Go Daddy

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hosting customers can have an unlimited number of “External Domains” forwarded to websites

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hosted by Go Daddy. Pl. Br. at 4. However, as stated in the interrogatory response cited by

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Petronas, “Go Daddy does not provide any services for the external domains themselves.”

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APP016, 7:11. In other words, the hosting customer must have the external domains forwarded
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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by the registrar of such domains, not by Go Daddy. Petronas similarly misconstrues a Go Daddy

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help article explaining how to “Redirect URLs with Your Hosting Account.” Pl. Br. at 4;

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APP046. None of the witnesses to whom this document was shown testified that Go Daddy

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could forward domains registered elsewhere. As noted above, a Go Daddy witness, Mr. Roling,

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explicitly testified to the contrary. Lansky, Ex. 1 (Roling, 48:14-18). Further, such URL

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redirects are only available for domains that are registered with Go Daddy and are in the

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customer‟s Go Daddy account. See Brown, ¶¶ 2-4, & Exs. 1, 2.

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B.

THE DISPUTED DOMAIN HAD BEEN FORWARDED FOR YEARS
BEFORE IT WAS REGISTERED WITH GO DADDY

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Petronas also inaccurately claims that “[a]ll of the evidence in the record . . . supports the

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inference that the domain name PETRONASTOWERS.NET only became linked to the

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pornographic website when GoDaddy began providing its domain name forwarding service on

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May 2, 2009.” Pl. Br. at 9. A search of public records reveals that the Disputed Domain had

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been forwarded to a pornographic website since mid-2004, years before it was even registered

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with Go Daddy. Slafsky, ¶ 6 & Exs. 1-5. The Disputed Domain was transferred from a different

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registrar to Go Daddy on April 1, 2007 and the registrant set up forwarding that day using Go

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Daddy‟s online dashboard. Roling, ¶ 15 & Ex. 4.2

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C.

GO DADDY ACTED PROMPTLY AFTER BEING NOTIFIED OF THE
DISPUTED DOMAIN

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Petronas contends that Go Daddy “ignored” the information Petronas provided and

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“refused to investigate” its claims regarding the Disputed Domain. Pl. Br. at 11-12. Petronas‟s

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contention again is inconsistent with the undisputed evidence of record.

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Petronas cites to Go Daddy‟s interrogatory response (APP147 at 16:19-22) in support of
the May 2, 2009 date. Pl. Br. at 9:2-5. The cited interrogatory response does not contain that or
any other date. APP147 at 16:19-22. A different document, APP035, does reference May 2,
2009 as the date the registrant implemented a forwarding option through Go Daddy‟s online
dashboard for www.petronastower.net (not the domain at issue in Petronas‟s motion). As
detailed above, that is not the first time that domain name was forwarded. Regardless, the
difference in dates is not material.
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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The documents cited in Petronas‟s Appendix establish that Go Daddy promptly

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investigated and responded to Petronas‟s notification regarding the Disputed Domain. Petronas

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submitted a formal trademark claim to Go Daddy regarding the domain name on July 7, 2010.

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APP092. Go Daddy investigated, determined that the domain name was registered with Go

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Daddy but hosted elsewhere, and responded the next day, July 8, 2010. APP091.

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As Go Daddy explained in its response (and as detailed in Go Daddy‟s Motion for

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Summary Judgment), Go Daddy‟s response was intended to comply with obligations to ICANN,

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pursuant to the UDRP. Id. Under the UDRP, registrars are expected, other than in exceptional

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circumstances, to maintain the status quo during a domain name dispute until receipt of

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

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administrative panel. Hanyen, Ex. 4 (UDRP) at ¶¶ 3, 7; Slafsky, Ex. 12 (Bilunes, 9:1-19); id.,

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Ex. 11 (Hanyen (10/20/2011), 16:3-17). Accordingly, Go Daddy told Petronas: “ICANN, the

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managing body of internet . . . specifically prohibits domain registrars from becoming involved

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in disputes over domain ownership in their Uniform Domain Name Dispute Resolution Policy.

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Any disputes over the ownership or wording of the domain name itself will need to be sent either

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to the owner, or through an arbitration forum, or the local court system.” APP091. As a

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courtesy, Go Daddy also provided information regarding the host of the website about which

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Petronas was complaining. Id. Further, as soon as Petronas notified Go Daddy that Petronas had

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initiated a Lanham Act in rem proceeding against the Disputed Domain, Go Daddy, in

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accordance with UDRP, locked the Disputed Domain. See Lansky, Ex. 2 at 1.

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Thereafter, on August 27, 2010, Go Daddy received an Order directing it to transfer the

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Disputed Domain name to Petronas. Hanyen, ¶ 27. Three days later, on August 30, 2010, Go

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Daddy complied with the Order and transferred ownership of the registration to Petronas‟s

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counsel. Id. Thus, Go Daddy transferred the domain name to Petronas as soon as it was able to

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do so – approximately two months after Petronas submitted its trademark claim.

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DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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III.

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ARGUMENT
A.

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CONTRIBUTORY LIABILITY DOES NOT APPLY TO A DOMAIN
NAME REGISTRAR MERELY PROVIDING DOMAIN FORWARDING
SERVICES

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First and foremost, Petronas cannot obtain summary judgment on its claim for

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“contributory cybersquatting,” because a claim for contributory trademark cybersquatting does

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not exist under the circumstances of this case. No defendant has ever been held liable for

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“contributory cybersquatting,” and there is no basis for the Court to create such precedent in this

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action.

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The case law concerning traditional principles of contributory trademark infringement is

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instructive. A claim for contributory trademark infringement has been recognized under only

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limited circumstances. In Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844 (1982), the Supreme

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court explained that contributory trademark infringement occurs when a manufacturer or

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distributor either intentionally induces another to infringe another‟s trademark, or continues to

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supply its product to another with knowledge or reason to know that the product is being used to

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infringe another‟s trademark. Id. at 854. Since then, only a small number of cases have

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permitted a claim for contributory trademark infringement to proceed where the defendant does

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not supply a product.

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In Hard Rock Cafe Licensing Corp. v. Concession Serv., Inc., 955 F.2d 1143 (7th Cir.

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1992), the Seventh Circuit considered whether the doctrine of contributory trademark

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infringement as set forth in Inwood Labs could apply to a defendant that does not manufacture or

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distribute a good that is palmed off as made by someone else, but instead operates a flea market

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where counterfeit goods are sold. See id. at 1148-9. The court looked to the common law of

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torts, which makes landlords and licensors of real estate responsible for torts committed by those

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on the premises where they know or have reason to know of the tortious conduct. Because the

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common law imposed the same duty on the defendant that the Supreme Court in Inwood Labs

26

imposed on manufacturers and distributors, the court concluded that a claim for contributory

27

trademark infringement existed under the circumstances. See id. at 1149. The Ninth Circuit

28

subsequently followed Hard Rock and recognized a contributory trademark infringement claim
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

against a swap meet operator that rented space to vendors whom it knew were selling counterfeit

2

recordings on the premises. See Fonovisa Inc. v. Cherry Auction, Inc., 76 F.3d 259, 265 (9th Cir.

3

1996) (“while trademark infringement liability is more narrowly circumscribed than copyright

4

infringement, the courts nevertheless recognize that a company „is responsible for the torts of

5

those it permits on its premises knowing or having reason to know that the other is acting or will

6

act tortiously‟”) (quoting Hard Rock, 955 F.2d at 1149, quoting Restatement (Second) of Torts

7

§ 877(c) & cmt. D (1979)).

8

More recently, courts have applied the Inwood Labs test to Internet companies that

9

effectively rent online space to those selling counterfeit goods. See Louis Vuitton Malletier, S.A.

10

v. Akanoc Solutions, Inc., -- F.3d--, 2011 WL 4014320, at *3 (9th Cir. Sept. 9, 2011) (affirming

11

contributory liability of service provider that physically hosted websites on its servers, which

12

Court found to be “Internet equivalent of leasing real estate”); Tiffany (NJ) Inc. v. eBay Inc., 600

13

F.3d 93, 105-08 (2d Cir. 2010) (eBay operated on-line marketplace and therefore exercised

14

sufficient control over sales of infringing products for application of Inwood to service).

15

However, courts have declined to extend the Inwood Labs framework to service providers that

16

do not act as the equivalent of a landlord, even if the service provided is “critical” for another to

17

engage in infringement. See Perfect 10, Inc. v. Visa Int’l Serv., Ass’n, 494 F.3d 788, 807 (9th

18

Cir. 2007) (allegations that defendant service provider could stop or reduce infringing conduct by

19

withholding its services upon notice of infringement failed to state claim for contributory

20

infringement because service provider did not exercise type of monitoring and control

21

contemplated by Inwood Labs and its progeny).

22

Petronas assumes the Inwood framework applies to cybersquatting, but it does not

23

contend that Go Daddy induced cybersquatting, or that Go Daddy manufactures or distributes a

24

product, and it fails to explain how Go Daddy is in any way the equivalent of a landlord with any

25

duty concerning tortious conduct on its premises. Nowhere does Petronas explain why this

26

Court should expand the Inwood framework to cyberquatting claims, which do not involve the

27

sale or distribution of infringing products in a marketplace made available by the defendant –

28

conduct that is relatively easy to police – but instead depend upon the intent of a third party.
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

The Supreme Court has made clear that when Congress creates a tort-like action, it does

2

so with knowledge of existing rules for secondary liability, and therefore Courts should assume

3

that absent contrary expression in the statute, Congress intended those same rules to apply to the

4

newly created claim. See Meyer v. Holley, 537 U.S. 280, 285 (2003). Where Congress says

5

nothing about extending traditional rules of secondary liability, a court errs by extending

6

secondary liability beyond the “traditional principles.” See id. at 286-7 (“Congress‟ silence,

7

while permitting an inference that Congress intended to apply ordinary background tort

8

principles, cannot show that it intended to apply an unusual modification of those rules.”)

9

(emphasis in original).

10

Here, Congress enacted the ACPA in 1999 against the backdrop of contributory

11

trademark liability limited only to the narrow circumstances described above. The ACPA itself

12

makes no mention of contributory liability, and the legislative history shows that far from

13

seeking to expand the scope of traditional contributory trademark infringement vis-à-vis domain

14

name registrars, Congress sought to codify the case law immunizing registrars from secondary

15

liability. See S.Rep. 106-140, at 11. Thus, the Court should not expand the scope of traditional

16

contributory liability and apply it to cybersquatting, where, as here, there is no allegation that the

17

defendant induced infringement, manufactured or delivered a product, or leased or rented space

18

at a marketplace where infringing products are sold. See Meyer, 537 U.S. at 285-87 (Ninth

19

Circuit erred when it applied secondary liability beyond traditional principles to statutory claim).

20

Indeed, the Ninth Circuit has already rejected application of contributory liability under

21

Inwood Labs to a claim against the provider of domain name registration and routing services.

22

See Lockheed, 194 F.3d at 985 (“Such a stretch would reach well beyond the contemplation of

23

Inwood Lab. and its progeny.”). The Lockheed court specifically addressed a contributory

24

trademark infringement claim against a domain name registrar. Id. at 982-83. It affirmed the

25

district court‟s grant of summary judgment to the registrar because domain name registration and

26

routing is a service, rather than a product, and a registrar that provides routing does not exercise

27

the type of direct control and monitoring that would justify extension of Inwood Labs to this

28
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

context. See id. at 985. In so holding, the Court compared the role of the registrar to that of the

2

United States Postal Service:

3
4
5
6
7
8

[W]hen an Internet user enters a domain-name combination, [the registrar]
translates the domain-name combination to the registrant‟s IP Address and routes
the information or command to the corresponding computer. Although [the
registrar‟s] routing service is only available to a registrant who has paid [the
registrar‟s] fee, [the registrar] does not supply the domain-name combination any
more than the Postal Service supplies a street address by performing the routine
service of routing mail.
Id. at 984-85.
The facts here are virtually identical and mandate the same result. Go Daddy provided

9

registration and routing services to the registrant of the Disputed Domain, who used those

10

services to register a domain name containing Petronas‟s mark, and to route the Disputed

11

Domain to a third-party computer hosting a website. As in Lockheed, Go Daddy exercised no

12

control over the domain-name combination selected by the registrant. Nor did Go Daddy

13

exercise control over the website to which the registrant routed the Disputed Domain. Go

14

Daddy, like a taxi that takes someone to a flea market where infringing good are sold, merely

15

delivered Internet users to a location on the Internet specified by the registrant. This service

16

“does not entail the kind of direct control and monitoring required to justify an extension of the

17

„supplies a product‟ requirement.” Lockheed, 194 F.3d at 985. Because Go Daddy neither

18

induces cybersquatting, nor supplies a product, and because its registration and forwarding

19

services are nothing like the leasing of real estate that would justify application of Inwood Labs,

20

Petronas‟s claim for contributory cybersquatting is not cognizable.

21

B.

GO DADDY IS IMMUNE FROM CONTRIBUTORY LIABILITY UNDER
THE ACPA AND ENSUING CASE LAW

22
23

Petronas‟s motion for summary judgment also must be denied because Go Daddy is

24

immune from any ACPA claim directed at its conduct as a domain name registrar. Petronas

25

acknowledges, as it must, that the ACPA and the case law provide immunity to registrars for

26

their conduct in registering and maintaining a domain name. See Pl. Br. at 2 (citing Lockheed,

27

194 F.3d at 984. Petronas then goes on to argue that a registrar‟s immunity applies only to the

28

discrete act of registering a domain name. See id. Because, according to Petronas, the discrete
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

act of registering a domain name is distinct from domain forwarding, the registrar‟s immunity

2

does not apply. This argument is specious because the registrar immunity is not limited to the

3

discrete act of registering a domain name.

4

Rather, the ACPA immunity applies to all conduct engaged in by a registrar functioning

5

as a registrar. See, e.g., Baidu, Inc. v. Register.com, Inc., 760 F. Supp. 2d 312, 320-21 (S.D.N.Y.

6

2010) (recognizing immunity applies not only to registration but also to conduct amounting to

7

subsequent maintenance of domain name); Solid Host, NL v. NameCheap, Inc., 652 F. Supp. 2d.

8

1092, 1105 (C.D. Cal. 2009) (“where the record indicates that a defendant did nothing more than

9

act as a registrar, no liability under § 1125(d) will lie”); Lockheed Martin Corp. v. Network

10

Solutions, Inc., 141 F. Supp. 2d 648, 655 (N.D. Tex. 2001) ( “Lockheed II”) (finding ACPA

11

inapplicable to company that registered domain names and linked them with IP numbers of

12

domain name servers connecting domain names to hosting web sites).

13

Indeed, the plain language of the statutory immunity refers to “registration or maintenance

14

of a domain name.” 15 U.S.C. § 1114(2)(D)(iii) (emphasis added). This provision codified cases

15

holding domain name registrars not liable for trademark infringement when performing the

16

functions of registrars. See S. Rep. 106-140, at 11 & n.11 (1999). The Ninth Circuit‟s Lockheed

17

decision, in particular, makes clear that such registrar functions includes domain name routing.

18

See Lockheed, 194 F.3d 980 (9th Cir. 1999).

19

In Lockheed, the Ninth Circuit held that the registrar defendant was not liable for

20

contributory infringement based on its registration of domain names (including variations on the

21

plaintiff‟s marks) and routing of those domain names to websites created by the registrant. See

22

id. at 982-85. It found a registrar‟s role in routing domain names to websites comparable to that

23

of the U.S. Postal service, and agreed with the District Court that such function was part of the

24

registration service. See id. at 984-85. Thus, Petronas‟s emphasis on the notion that registering

25

a domain is different than forwarding a domain (Pl. Br. at 2) is misplaced. The act of initially

26

registering, or obtaining, a domain is different from forwarding (or otherwise resolving) a

27

domain, but that does not mean that forwarding is not a basic registrar service. Rather, as this

28

Court has already recognized, the pertinent inquiry is whether Go Daddy‟s forwarding service “is
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

substantially similar to the „routing‟ service offered by the [defendant] in Lockheed.” Dkt. No.

2

67, at 4. If it is, “then Petronas will not succeed in its claim of contributory infringement, let

3

alone the claim of infringement.” Id.

4

Numerous fact witnesses testified that domain forwarding is a form of routing. Lansky,

5

Ex. 3 (Anderson, 8:1-2 (“Domain name forwarding directs a domain name to a specific URL.

6

It‟s a type of routing.”), 10:12-11:1, 67:10-12); Roling, ¶¶ 2 (“Go Daddy does not charge

7

customers for domain forwarding, but rather offers this routing option as part of its registration

8

services”), 12; Munson, ¶ 9 (“To an internet user, there is no distinction between resolution to a

9

website through routing and resolution through forwarding”). Several also testified that domain

10

forwarding is provided for free, and as part of the overall registration services. See, e.g. Lansky,

11

Ex. 4 (Hertz, 14:4-17); Roling, ¶ 2. Indeed, the recognition of forwarding as a basic registrar

12

service is echoed throughout the record, as well as by the three amici curiae who filed briefs in

13

support of Go Daddy‟s Motion for Summary Judgment. See, e.g. Lansky, Ex. 3 (Anderson,

14

19:12-24); Roling, ¶ 2; Brief of Amicus Curiae Enom, Inc., pp. 1 (“Domain name forwarding is a

15

standard feature provided by eNom, GoDaddy and most other registrars.”), 4; Brief of Amici

16

Curiae Network Solutions, LLC and Register.com, Inc., pp. 1, 5, 6 (“Network Solutions and

17

Register.com consider the provision of routing information in connection with a domain name to

18

be an essential function of the registration and maintenance processes – without it, a domain

19

name is not functional.”).

20

Moreover, countless on-line sources refer interchangeably to “forwarding” and “routing,”

21

or its commonly used synonyms: “pointing” or “directing.” For example, PC Mag defines

22

“domain forwarding” as “redirecting requests on the Internet to a different Internet address. For

23

example, domain forwarding allows multiple domain name to be registered, all of which point to

24

the same Web site.”

25

http://www.pcmag.com/encyclopedia_term/0,2542,t=domain+forwarding&i=41681,00.asp.

26

Even Domain Names for Dummies explains that domain name forwarding (listed here as “URL

27

Forwarding”) is equivalent to routing or pointing to a domain name:

28

Many registrars provide a service that links your new domain name to your
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1
2
3

preexisting Web site, so that traffic to your new address will be automatically
forwarded to that URL. You can even choose to have numerous domain names
linked to the same Web site. So, for example, if your company has changed names,
you can make sure that people who know you by your new name and those who
know you by your old name will all end up in the same place, no matter which
domain name they use.

4
5
6

Domain Names for Dummies, by GreatDomains.com with Susan Wels at 56 (2001).
Courts also equate forwarding (the process of routing to an existing website) with

7

“rerouting” or “re-directing.” See, e.g., LCW Auto. Corp. v. Restivo Enters., No. SA–04–CA–

8

0361–XR, 2004 WL 2203440, at *1, n.2 (W.D. Tex. Sept. 24, 2004) (noting that multiple

9

websites “re-route the user to Defendant‟s principal website.”); Halo Mgmt., LLC v. Interland,

10

Inc., 308 F. Supp. 2d 1019, 1024 (N.D. Cal. 2003) (“As a part of its business practices, Interland

11

employs the web address „bluehalo.com,‟ often redirecting visitors to the „bluehalo.com‟ site to

12

Interland‟s corporate homepage („interland.com‟).”); Super-Krete Int’l, Inc. v. Sadleir, 712 F.

13

Supp. 2d. 1023, 1032 (C.D. Cal. 2010) (“Defendants registered the domain name

14

<Supercrete.com> in 1999 and have since used the domain to reroute web viewers to Concrete

15

Solutions‟ primary website.”); K.S.R. XRay Supplies, Inc. v. Southeastern X-Ray, Inc., No. 09-

16

81454-CIV, 2010 WL 4317026, at *2 (S.D. Fla. Oct. 25, 2010) (“Greene conducts SXI‟s

17

business through the website located at XraySUPERCENTER.COM . . . Greene‟s additional

18

domains include X-RAYSUPERCENTER.COM, SOUTHEASTERNXRAY.COM,

19

DISCOUNTX-RAY.COM, and several others, which are redirected, or „pointed‟ to the

20

XRaySUPERCENTER main web site.”); McSpadden v. Caron, No. 03–CV–6285 CJS., 2004

21

WL 2108394, at *5 (W.D.N.Y. Sept. 20, 2004) (“Caron and Wallace began to use the

22

usamedicine.com domain name to „point‟ customers to their discountmedsonline.com website.

23

That is, persons attempting to use the usamedicine.com website were automatically re-directed to

24

the discountmedsonline.com website . . . [plaintiff] also alleged that one or all of the defendants

25

altered the americanlifestyle.com website to cause visitors to that site to be re-routed to the

26

nicepriceusa.com website”).

27

In light of this overwhelming evidence, Petronas‟s attempts to cast forwarding as

28

something other than a basic registrar service do not stand up to scrutiny. In particular, Petronas
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

unduly relies upon an out-of-context quote from Ron Hertz, Go Daddy‟s Vice President and

2

Corporate Controller, for the proposition that registration is different than forwarding (Pl. Br. at

3

2). It is, but that does not mean forwarding is anything but a basic registrar function. As

4

Mr. Hertz explained, “[p]art of Go Daddy‟s domain registration services is giving the registrant

5

the ability to manage a domain‟s DNS which essentially is allowing you to point that domain . . .

6

to any particular domain, any DNS servers that you would like.” Lansky, Ex. 4 (Hertz, 14:4-10).

7

Mr. Hertz specifically acknowledged that Go Daddy‟s registration services include (at no extra

8

charge) giving the customer “the ability to forward” domain names. Id. at 14:11-17. Further, it

9

is irrelevant that Go Daddy did not offer forwarding during the first few months the Company

10

was in business, between November 2000 and April 2001. Pl. Br. at 3. It goes without saying

11

that the Internet has evolved dramatically over the past decade, as has the scope of services

12

provided by domain name registrars. Go Daddy itself provides forwarding services to

13

approximately 8.2 million domain names under its management. Roling, ¶ 13.

14

Granted, not all customers want their domains forwarded to an existing Web page.

15

Consequently, as Petronas correctly points out, it is possible to perform registration and

16

maintenance of a domain name without forwarding that domain. Pl. Br. at 3-4. But the mere

17

fact that not every customer chooses to use forwarding does not make it any less of a basic

18

registrar service, just as the fact that not everyone uses cream or sugar in their coffee does not

19

make the provision of those condiments any less of a basic service at a coffeehouse.

20

Petronas presents no evidence that domain forwarding is anything but a form of domain

21

routing.3 Because it is undisputed that forwarding is merely a form of routing, and the Ninth

22

Circuit has already concluded that routing is part of the basic registration service shielded from

23
3

24
25
26
27
28

Because Petronas has not submitted any evidence that forwarding is anything but a type of
routing, it may not do so with its reply papers. See, e.g., United States v. Patterson, 230 F.3d
1168, 1172 (9th Cir.2000) (arguments and evidence presented for the first time in reply waived);
American Traffic Solutions, Inc. v. Redflex Traffic Sys. Inc., No. cv-08-2051-PHX-FJM, 2009
WL 775104, at *1 (D. Ariz. Mar.20, 2009) (“The remedy for dealing with new evidence first
appearing in a reply is that we will not consider issues or evidence raised for the first time in
plaintiff's reply.”); Wallace v. Countrywide Home Loans, Inc., No. SACV 08-1463, 2009 WL
4349534 AT *7 (C.D. Cal. Nov. 23, 2009) (“The opposing party should not have to incur the
cost and effort of additional filings-a motion for leave to file a sur-reply, and the sur-reply itselfbecause the movants deliberately, or more likely inadvertently, held back part of their case.”).
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

liability, Go Daddy cannot be contributorily liable for providing this service to the alleged

2

cybersquatter.

3

C.

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

4
5

In any event, Go Daddy still cannot be found liable for contributory cybersquatting

6

because there is insufficient evidence to support such a claim. Summary judgment is only proper

7

where “there is no genuine dispute as to any material fact and the movant is entitled to a

8

judgment as a matter of law.” Fed. R. Civ. P. 56(a). In ruling on a motion for summary

9

judgment, the court must draw all reasonable inferences in favor of the non-moving party,

10

including questions of credibility and of the weight to be accorded particular evidence. Masson

11

v. New Yorker Magazine, Inc., 501 U.S. 496, 520 (1991) (citing Anderson v. Liberty Lobby, Inc.,

12

477 U.S. 242, 255 (1986)); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 588

13

(1986); T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir.

14

1987). It is the Court‟s responsibility to determine whether the undisputed material facts

15

together with any specific evidence provided by the nonmoving party are such that a reasonable

16

jury could find for the nonmoving party. See, e.g., T.W. Elec., 809 F.2d at 631. In such

17

circumstances, summary judgment must be denied. See, e.g., Anderson, 477 U.S. at 248. Here,

18

and as set forth in Go Daddy‟s separate Motion for Summary Judgment, the lack of evidence in

19

support of Petronas‟s claim mandates summary judgment – in favor of Go Daddy.

20
21

1.

If A Contributory Cybersquatting Claim Could Be Asserted, A
Heightened Showing of “Exceptional Circumstances” Would Be
Required

22

The elements of a claim for contributory cybersquatting under any circumstances are far

23

from “well settled,” despite Petronas‟s assertion to the contrary. Pl. Br. at 5. No appellate court

24

has recognized such a claim. The recent Ninth Circuit opinion Petronas relies upon sets forth the

25

requirements for traditional trademark contributory liability, and does not in any way address a

26

claim under the ACPA. See Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., --F.3d--,

27

2011 WL 4014320, at *3 (9th Cir. Sept. 9, 2011). The only case cited by Petronas that addresses

28

a claim for contributory cybersquatting is Solid Host, NL v. NameCheap, Inc., 652 F. Supp.2d
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

-15-

1

1092 (C.D. Cal. 2009), which in turn relied upon Ford Motor Co. v. Greatdomains.com, Inc.,

2

177 F. Supp. 2d 635 (E.D. Mich. 2001). But neither of these cases address whether a court could

3

properly extend the scope of a contributory infringement claim to the context of cybersquatting.

4

Moreover, each of the cases, decided at the pleading stage, make clear that the standard to

5

establish a contributory cybersquatting claim would have to be higher than that applied to

6

contributory infringement claims:

7
8
9
10
11
12

[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.

13

Ford Motor, 177 F. Supp. 2d at 647 (emphasis added); accord Solid Host, 652 F. Supp. 2d at

14

1114; see also, Microsoft Corp. v. Shah, No. C10-0653 RSM, 2011 WL 108954, at *2 (W.D.

15

Wash. Jan. 12, 2011).

16
17

2.

There Is No Finding of Direct Cybersquatting

A prerequisite to contributory infringement is a finding of direct infringement. See, e.g.,

18

Georgia-Pacific Consumer Prod. LP v. Myers Supply, Inc., No. 6:08-cv-6086, 2009 WL

19

2192721, *4 (W.D. Ark. July 23, 2009) (“the second element of contributory infringement is

20

actual infringement”), aff’d 621 F.3d 771, 774 (8th Cir. 2010) (upholding summary judgment of

21

no contributory infringement where underlying behavior did not constitute direct infringement).

22

Here, there has been no finding of cybersquatting, and Petronas‟s attempt to show cybersquatting

23

is inadequate.

24

It is well-established that “[a] finding of bad faith” is an essential prerequisite to finding

25

an ACPA violation.” Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir.

26

2002). Whether “bad faith” exists is highly fact dependent, and requires a thorough review of

27

the unique circumstances of each case. See id. at 946-47; Anlin Indus., Inc. v. Burgess, 301 F.

28

App‟x. 745, 746 (9th Cir. 2008). The evidence that Petronas has submitted falls far short of
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

-16-

1

supporting a finding that the registrant acted with a bad faith intent to profit from Petronas‟s

2

trademark. 15 U.S.C. § 1125.

3

Petronas points only to minimal evidence in support of some factors considered when

4

determining bad faith under ACPA, and Petronas‟s evidence is not always what it claims. First,

5

Petronas claims that the registrant had no intellectual property rights in the Disputed Domain, but

6

merely points to evidence that the registrant did not respond to Petronas‟s letters. Pl. Br. at 7.

7

Second, Petronas claims the registrant “diverted customers from Petronas‟s online locations,” but

8

only cites to the Manokaran Declaration, which merely states that Petronas uses certain websites;

9

it does not provide any proof that any customers actually were diverted from Petronas‟s websites

10

to the registrant‟s, and, in fact, Petronas‟s corporate representative testified that no customers

11

have complained about any such diversion. APP088 (Manokaran Decl. at ¶¶ 4, 5); Slafsky Ex. 9

12

(Gaik, 55:5-16). Third, Petronas claims that the registrant registered “multiple domain names

13

which the person [Registrant] knew are identical or confusingly similar to marks of others that

14

are distinctive at the time of registration.” Pl. Br. at 7. But Petronas points to only two of many

15

domain names registered by the registrant as containing distinctive marks, and further provides

16

no evidence of what the registrant “knew” about the word “Petronas” at the time of registration.

17

See Hanyen Ex. 7 (pages of account information reflecting numerous domains registered by

18

registrant with Go Daddy). Fourth, Petronas presents no evidence one way or the other on

19

factors 3 (prior use), 6 (offer to sell the domain name), or 7 (false contact information).

20

Moreover, these statutory factors are merely permissive, Interstellar, 304 F.3d at 946-47,

21

and the ACPA provides that bad faith “shall not be found in any case in which the court

22

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

23

domain name was a fair use or otherwise lawful,” 15 U.S.C. § 1125(d)(1)(B)(ii). As Petronas

24

did not seek any discovery from the registrant of the Disputed Domain, there is simply no way

25

for this Court to determine what the registrant believed at the time of registration, and thus

26

whether there was a bad faith intent to profit from Petronas‟s mark. The minimal evidence

27

presented by Petronas fails to demonstrate that the registrant registered and used the Disputed

28

Domain with a bad faith intent to profit from Petronas‟s mark, and thus the contributory
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

cybersquatting claim must fail as a matter of law. See, e.g., Competition Specialties, Inc. v.

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Competition Specialties, Inc., 87 F. App‟x. 38, 42-43 (9th Cir. 2004) (district court properly

3

granted defendant judgment as a matter of law on ACPA claim despite evidence that defendant

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used domain names containing plaintiff‟s mark).

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3.

There Is No Evidence That Go Daddy Monitored and Controlled The
Instrumentality of Cybersquatting

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7

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

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Daddy cannot be held liable as a contributory cybersquatter because it did not and could not

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monitor and control the unlawful conduct. Petronas misunderstands the nature of a

10

cybersquatting claim when it argues that domain forwarding is the instrumentality used by the

11

registrant to engage in cybersquatting. Pl. Br. at 9. The first requirement of a cybersquatting

12

claim is that the defendant have “a bad faith intent to profit from” someone else‟s trademark. 15

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U.S.C. § 1125(d)(1)(A)(i). Here, there is no evidence that Go Daddy had any control over the

14

registrant‟s intent when he registered a domain name that included the Petronas mark and then

15

forwarded it to a pornographic website. Compare Microsoft, 2011 WL 108954, at *2 (plaintiff

16

stated claim for contributory cybersquatting based on allegations that defendant induced

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unlawful conduct by providing instruction on how to engage in cybersquatting). There is no

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evidence that Go Daddy had any input into the registrant‟s selection of the domain name

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combination and decision to route the Disputed Domain to a pornographic website. And there is

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no evidence that Go Daddy had any control over the operation or content of the website to which

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the registrant caused the Disputed Domain to be routed.

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Moreover, Petronas is simply wrong that domain forwarding is the instrumentality of

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cybersquatting. If the registrant of the Disputed Domain engaged in cybersquatting, he did so

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because, with a bad faith intent to profit from the Petronas mark, he both selected a domain name

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that included the Petronas mark and used domain forwarding in an attempt to divert Internet

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users from Petronas‟s website to another website. The use of domain forwarding in and of itself

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is not cybersquatting. Had the website to which the Disputed Domain was forwarded contained,

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for example, a critique of Petronas‟s business practices, there would be no cybersquatting claim.
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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Forwarding, like any form of routing, merely delivers Internet users from a domain name to a

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website. By providing a forwarding service, Go Daddy in no way exercises the type of control

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over its registrants‟ intent and use of domain names that would justify imposing a landlord-like

4

duty to monitor what is being done with the 8.2 million4 domain names that are registered with

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Go Daddy and utilize Go Daddy‟s domain forwarding service. Cf. Perfect 10, 494 F.3d at 807

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(defendant credit card company, which provided critical support to website hosting infringing

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content, and which could have stopped or reduced infringing activity upon receipt of notice from

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plaintiff did not exercise the type of “direct control” over the infringing conduct to justify

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imposition of contributory trademark liability).

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4.

Go Daddy Did Not Have Knowledge That the Registrant Was
Cybersquatting

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Petronas‟s motion must also be denied because the evidence is insufficient to establish

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the “exceptional circumstances” that would justify imputing to Go Daddy knowledge that the

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registrant registered the Disputed Domain and utilized Go Daddy‟s forwarding service with a

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bad faith intent to profit from Petronas‟s trademark. Petronas relies upon the “knew or should

16

have known” standard applied in the context of traditional contributory trademark infringement

17

claims. See Pl. Br. at 9 (citing Tiffany, 600 F.3d at 109). But while it might make sense to

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require the operator of an on-line marketplace to review sales listings once provided with notice

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of specific listings that are claimed to be offering counterfeit goods, in the same way that a flea

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market operator must police a vendor once provided with notice that such vendor is selling

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infringing goods, a duty to investigate a claim of cybersquatting cannot be triggered by mere

22

notice from a trademark owner. For this reason, as set forth supra at 16, district courts have

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uniformly adopted a heightened standard of “exceptional circumstances.” Under this standard, a

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domain name registrar is not generally expected to ascertain the good or bad faith intent of its

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registrants. Ford, 177 F. Supp. 2d at 647.

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27
4

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Roling, ¶ 13.

DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

Further, mere notice from a trademark owner of alleged cybersquatting is not enough to

2

trigger a duty to investigate. See id.; Solid Host, 652 F. Supp. 2d at 1116. This is because

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cybersquatting, unlike the sale of counterfeit goods, is not easily detectible: “In general,

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cybersquatting is less easily detected than standard trademark infringement, both because it

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involves the consideration of intent and because it is less „transparent‟ than „handbags labeled

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Louis Vuitton and Gucci, cheaply made, lined with purple vinyl, and sold by itinerant peddlers at

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bargain-basement prices.‟” Solid Host, 652 F. Supp. 2d at 1117 (quoting Fare Deals, Ltd. v.

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World Choice Travel.com, Inc., 180 F. Supp. 2d 678, 691 (D. Md. 2001)).

9

Here, the evidence presented by Petronas does not come close to the type of “exceptional

10

circumstances” that might trigger a duty by a registrar to investigate an allegation of

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cybersquatting. Petronas merely notified Go Daddy that the Disputed Domain was linked to a

12

“mirror” of the website to which the first domain name disputed by Petronas had been linked

13

(APP155), and provided Go Daddy with information identifying the registrant and reflecting that

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Petronas owned rights in the mark “PETRONAS” (APP092-95). From this information, Go

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Daddy could not possibly have evaluated all nine of the factors set forth in the ACPA to

16

determine whether cybersquatting had occurred.

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Petronas suggests that upon receipt of notice from a trademark owner, a domain name

18

registrar should be required to scour its own records and review files related to other domain

19

name disputes. See Pl. Br. at 11. But even the case Petronas relies upon makes clear that for

20

there to be any duty to investigate, the trademark owner has the burden to submit “sufficient

21

evidence of a violation.” Solid Host, 652 F. Supp. 2d at 1116. No court has imposed the type of

22

duty to investigate that Petronas asks this Court to impose. Additionally, the traditional

23

contributory infringement cases make clear that the generalized knowledge Go Daddy may have

24

had based upon its experience in handling other trademark claims, see Pl. Br. at 12, is

25

insufficient to impute to Go Daddy knowledge of specific infringing activity. See Tiffany, 600

26

F.3d at 107 (“For contributory trademark infringement liability to lie, a service provider must

27

have more than a general knowledge or reason to know that its service is being used to sell

28

counterfeit goods.”).
DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

Finally, Go Daddy did not “ignore” and was not “willfully blind” to Petronas‟s trademark

2

claim. Go Daddy acknowledged receipt of the claim, explained that disputes over content hosted

3

by third parties had to be addressed to the registrant or operator of the website, referred Petronas

4

to the UDRP as the typical means of resolving domain name disputes, and, as a courtesy,

5

provided Petronas with information about the host of the website. APP091-92. Requiring

6

domain name registrars to do anything more in the short period of time in which it takes for a

7

trademark owner to obtain a transfer order (here it took Petronas less than two months from the

8

filing of an in rem proceeding) would unnecessarily impose a tremendous burden on registrars,

9

and vitiate the highly successful process for dealing with domain name disputes set forth in the

10

UDRP. For this reason, the district court in Lockheed II recognized that

11

[s]heer 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. 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.

12
13
14
15

Lockheed II at 655.

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IV.

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18

CONCLUSION
For the foregoing reasons, Go Daddy respectfully requests that the court deny Petronas‟s

motion for summary judgment in its entirety.

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Dated: November 16, 2011

WILSON SONSINI GOODRICH & ROSATI
PROFESSIONAL CORPORATION

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By: /s/ John L. Slafsky
JOHN L. SLAFSKY
DAVID L. LANSKY
HOLLIS BETH HIRE
[e-mail]
[e-mail]
[e-mail]

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Attorneys for Defendant
GODADDY.COM, INC.

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DEFENDANT‟S OPPOSITION TO PLAINTIFF‟S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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