Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 134

MOTION for Partial Summary Judgment re Liability for Contributory Cybersquatting as to PETRONASTOWERS.NET filed by Petroliam Nasional Berhad. Motion Hearing set for 12/7/2011 09:00 AM in Courtroom 3, 3rd Floor, Oakland before Hon. Phyllis J. Hamilton. Responses due by 11/16/2011. Replies due by 11/23/2011. (Clark, Perry) (Filed on 11/21/2011)

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PERRY R. CLARK, State Bar No. 197101
LAW OFFICES OF PERRY R. CLARK
825 San Antonio Road
Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD (PETRONAS)

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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PETROLIAM NASIONAL BERHAD
(PETRONAS),
Plaintiff,

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vs.

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GODADDY.COM, INC.,

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Defendant.

) CASE NO: 09-CV-5939 PJH
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) Noticed Hearing Date: December 7, 2011
) Noticed Hearing Time: 9:00 a.m.
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NOTICE OF MOTION AND MOTION FOR
PARTIAL SUMMARY JUDGMENT ON GODADDY’S LIABILITY FOR
CONTRIBUTORY CYBERSQUATTING
(COUNT II OF FIRST AMENDED COMPLAINT)
AND
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT

DOCUMENT SUBMITTED UNDER SEAL AND CHAMBERS COPY

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NTC. OF MTN. AND MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

NOTICE OF MOTION

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2 TO DEFENDANT GODADDY.COM, INC. AND TO ITS ATTORNEYS OF RECORD:
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PLEASE TAKE NOTICE that on Wednesday, December 7, 2011, at 9:00 a.m., or as

4 soon thereafter as the matter may be heard by the Hon. Phyllis J. Hamilton in Courtroom 3, Third
5 Floor, United States Courthouse, 1301 Clay Street, Oakland, California, Plaintiff Petroliam
6 Nasional Berhad (Petronas) will and hereby does move this Court to grant summary judgment
7 that Defendant GoDaddy.com, Inc. is liable for Plaintiff’s claim for contributory cybersquatting
8 (Count II of Plaintiff’s First Amended Complaint (Doc. No. 69)). Plaintiff makes this motion
9 pursuant to Fed. R. Civ. P. 56.
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The movant, Plaintiff Petroliam Nasional Berhad (Petronas), seeks the following relief:

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1.

An order granting partial summary judgment that Defendant GoDaddy.com, Inc.

12 is liable for Plaintiff’s claim for contributory cybersquatting (Count II of Plaintiff’s First
13 Amended Complaint (Doc. No. 69));
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2.

Alternatively, if the Court does not grant all of the relief requested in the

15 preceding paragraph 1, an order stating that all or some of the material facts established herein
16 are not genuinely in dispute and shall be treated as established in this case pursuant to Fed. R.
17 Civ. P. 56(g).
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A proposed order is filed concurrently herewith.

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NTC. OF MTN. AND MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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PERRY R. CLARK, State Bar No. 197101
LAW OFFICES OF PERRY R. CLARK
825 San Antonio Road
Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD (PETRONAS)

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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PETROLIAM NASIONAL BERHAD
(PETRONAS),
Plaintiff,

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) CASE NO: 09-CV-5939 PJH
)
) Noticed Hearing Date: December 7, 2011
) Noticed Hearing Time: 9:00 a.m.
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vs.

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GODADDY.COM, INC.,

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Defendant.

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MEMORANDUM OF POINTS AND AUTHORITIES
IN SUPPORT OF
PLAINTIFF’S MOTION FOR
PARTIAL SUMMARY JUDGMENT ON GODADDY’S LIABILITY FOR
CONTRIBUTORY CYBERSQUATTING
(COUNT II OF FIRST AMENDED COMPLAINT)

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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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TABLE OF CONTENTS

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NOTICE OF MOTION ................................................................................................................. i

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MEMORANDUM OF POINTS AND AUTHORITIES ............................................................ ii

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TABLE OF CONTENTS .............................................................................................................iii

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TABLE OF AUTHORITIES....................................................................................................... iv

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

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SUCCINT STATEMENT OF RELEVANT FACTS ................................................................. 2

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ARGUMENT ................................................................................................................................. 2

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I.

GoDaddy Is Not Shielded By Any “Safe Harbor For Registrars” ................... 2

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II.

godaddy committed CONTRIBUTORY CYBERSQUATTING as to
PETRONASTOWERS.NET ................................................................................ 5

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A.

The Registrant of PETRONASTOWERS.NET Engaged in
Direct Cybersquatting............................................................................... 5

B.

GoDaddy’s Domain Name Forwarding Service Was the
Instrumentality Used By The Registrant To Engage In Direct
Cybersquatting .......................................................................................... 9

C.

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Godaddy Should Have Known The Registrant Was Using Its
Domain Name Forwarding Service To Engage In
Cybersquatting Or Was Willfully Blind To It ........................................ 9

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1.

GoDaddy Knew The Specific Identity of the Registrant
Accused of Direct Cybersquatting As To
PETRONASTOWERS.NET ...................................................... 10

2.

Godaddy Was In Possession Of Facts Proving That The
Registrant Was Engaged In Cybersquatting ............................ 11

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D.

Godaddy Exercised Direct Control And Monitoring Of Its
Domain Name Forwarding Service, Which Was The
Instrumentality Used To Engage In Cybersquatting ........................... 12

CONCLUSION ............................................................................................................................ 14

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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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TABLE OF AUTHORITIES

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CASES

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Baidu, Inc. v. Register.com, Inc., 760 F. Supp. 2d 312 (S.D.N.Y. 2010) ....................................... 3

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Hard Rock Café Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143, 1149
(7th Cir. 1992) ................................................................................................................... 10

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Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854, 102 S.Ct. 2182, 72
L.Ed.2d 606 (1982) ............................................................................................................. 5
Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp.2d 648, 655 (N.D.
Tex. 2001) ........................................................................................................................... 3
Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th
Cir.1999) ................................................................................................................... 2, 5, 12
Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., --F.3d-- (9th Cir. 2011),
2011 WL 4014320, *3 (9th Cir. Sept. 9, 2011) ............................................................. 5, 12
Official Ariline Guides, Inc. v. Goss, 6 F.3d 1385, 1390-91 (9th Cir. 1993) .................................. 6
Solid Host, NL v. Namecheap, Inc., 652 F. Supp.2d 1092, 1104 (C.D. Cal. 2009) .......... 2, 5, 9, 10
Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 109 (2nd Cir. 2010) ................................................. 9
STATUTES

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15 U.S.C. § 1125(d)(1)(A): (1) ....................................................................................................... 5
15 U.S.C. § 1125(d)(1)(B)(i) ................................................................................................... 6, 7, 8
15 U.S.C. § 114(2)(D)(iii) ............................................................................................................... 2
5 U.S.C. § 1125 ............................................................................................................................... 6
Fed. R. Civ. P. 30(b)(6) ................................................................................................................... 1
Fed. R. Civ. P. 56 ............................................................................................................................. i
Fed. R. Civ. P. 56(g)......................................................................................................................... i

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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

STATEMENT OF ISSUES TO BE DECIDED

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Issue One:

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Is GoDaddy shielded from liability for contributory cybersquatting as to

4 PETRONASTOWERS.NET by any “safe harbor for registrars” in the ACPA or the Lockheed line
5 of cases? No. GoDaddy’s liability for contributory cybersquatting as to
6 PETRONASTOWERS.NET arises from its domain name forwarding service, which the
7 undisputed evidence establishes is unrelated to its conduct as a registrar performing the
8 registration or maintenance of a domain name. To the extent the ACPA or Lockheed afford
9 registrars immunity for contributory cybersquatting, such immunity is strictly limited to the
10 registrar’s conduct in registering or maintaining a domain name.
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Issue Two:

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Is there a genuine dispute as to any material fact establishing GoDaddy’s liability for

14 contributory cybersquatting? No. The material facts establishing that GoDaddy continued to
15 provide its domain name forwarding service for PETRONASTOWERS.NET with knowledge of
16 Registrant’s cybersquatting are supported GoDaddy’s own documents, discovery responses, and
17 the testimony of GoDaddy’s Fed. R. Civ. P. 30(b)(6) deponents. And the material facts
18 establishing that GoDaddy had “direct control and monitoring” over the Registrant’s use of its
19 domain name forwarding service to engage in cybersquatting are also supported by the same type
20 of GoDaddy materials. As a result, there is no genuine dispute as to any material fact establishing
21 GoDaddy’s liability for contributory cybersquatting with respect to the domain name
22 PETRONASTOWERS.NET.
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NTC. OF MTN. AND MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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SUCCINT STATEMENT OF RELEVANT FACTS

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The relevant facts are set forth in the following sections in connection with the arguments
to which they relate.

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ARGUMENT
I.

GODADDY IS NOT SHIELDED BY ANY “SAFE HARBOR FOR REGISTRARS”
There is no “safe harbor” in the ACPA or the case law related to Lockheed Martin Corp. v.

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Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir.1999), that would shield GoDaddy from

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liability for contributory cybersquatting as to PETRONASTOWERS.NET. To the extent the

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ACPA and the Lockheed line of cases afford “immunity” to registrars, such “immunity” is strictly

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limited to liability arising from a registrar’s conduct as a registrar performing the registration and

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maintenance of a domain name and does not extend to other conduct or services by registrars, such

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as GoDaddy’s domain name forwarding service.

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The “safe-harbor” provision of the ACPA states that “[a] domain name registrar . . . shall

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not be liable for damages under this section for the registration or maintenance of a domain name

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for another.” 15 U.S.C. § 114(2)(D)(iii). The Lockheed “safe harbor” is based on the Ninth

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Circuit’s holding that the defendant in that case, the domain name registrar NSI, was not liable for

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contributory trademark infringement because “[w]here domain names are used to infringe, the

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infringement does not result from NSI’s [the registrar’s] publication of the domain name list, but

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from the registrant’s use of the name on a website or other Internet form of communication” and

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“NSI’s involvement with the use of domain names does not extend beyond registration.”

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Lockheed, 194 F.3d at 984-985.

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Courts interpreting the “safe harbor” for registrars in the ACPA and Lockheed have held

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repeatedly that a domain name registrar is only “immune when it acts as a registrar, i.e. when it

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accepts registrations for domain names from customers.” Solid Host, NL v. Namecheap, Inc., 652

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F. Supp.2d 1092, 1104 (C.D. Cal. 2009) (rejecting contention that Lockheed or the ACPA “affords

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registrars blanket immunity from liability”) citing Lockheed Martin Corp. v. Network Solutions,

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MEM. ISO P.’S MTN. FOR
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Case No: 09-CV-5939 PJH

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Inc., 141 F. Supp.2d 648, 655 (N.D. Tex. 2001) (finding that the ACPA does not extent “to a

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person functioning solely as a registrar or registry of domain names.”)). At least one District

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Court has held that a registrar is not immune from liability for contributory cybersquatting based

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on “wrongful actions that occurred long after the registration of [the] domain name” or actions

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associated with the maintenance of a customer’s registration account rather than maintenance of a

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

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(registrar not “immune” under ACPA for contributory cybersquatting where it allowed a third

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party to take control of plaintiff’s domain name registration account and use the domain name to

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engage in trademark infringement).

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Here, GoDaddy was not acting as a domain name registrar performing the registration or

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maintenance of the domain name PETRONASTOWERS.NET when it refused to stop providing

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its domain name forwarding service linking that domain name to a pornographic website. To the

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contrary, the undisputed evidence supports the deposition testimony of GoDaddy’s Vice President

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and Corporate Controller, Ron Hertz, that “I don’t believe the forwarding service relates at all to

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the registration of the domain name.” APP009 1 (Hertz at 13:7-12).

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It is undisputed that GoDaddy did not begin to offer its domain name forwarding service to

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customers until April 3, 2001, even though it began providing the registration and maintenance of

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domain names for customers as an ICANN accredited registrar at least six months earlier, in

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November 2000. APP016 (GoDaddy’s Response to Interrogatory No. 25 at 7:22); APP023

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(Anderson Depo. (10/13/2011)) at 6:22-7:10, 8:12-16). Laurie Anderson, GoDaddy’s Fed. R. Civ.

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P. 30(b)(6) deponent on GoDaddy’s domain name forwarding service, testified that “GoDaddy

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could have performed the registration and maintenance of the domain names

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PETRONASTOWER[.NET] and PETRONASTOWERS.NET without providing its domain name

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References to “APPXXX” are to pages in the Appendix of Fed. R. Civ. P. 56(c)(1)(A)
Materials In Support Of Motion For Partial Summary Judgment filed concurrently herewith.

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forwarding service.” APP028-29 (Anderson (10/13/2011) at 22:9-19, 27:13-23). Indeed,

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GoDaddy was the registrar for PETRONASTOWERS.NET from April 1, 2007 to May 2, 2009

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and did not provide its domain name forwarding service for PETRONASTOWERS.NET at all

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during that two year period. APP013-14 (GoDaddy’s Response to Interrogatory No. 21 at 4:27-

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28); APP035 (Decl. of Kelly Lewis, Esq. at 2:23-27). And GoDaddy has been the registrar of

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PETRONASTOWERS.NET and performed all of the functions required for the registration and

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maintenance of that domain name since it stopped providing its domain name forwarding service

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on August 30, 2010. APP021 (GoDaddy’s Response to Interrogatory No. 21 at 5:7-8) APP038

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(GD-000293); APP040-41 (GD-00560-561).

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Moreover, the undisputed evidence shows that GoDaddy provides its domain name

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forwarding service for the domain names of its hosting customers even though GoDaddy is not the

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registrar of those domain names. APP006 (GoDaddy’s Response to Interrogatory No. 24 at 7:7-

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11); APP043 (PET GD 002469); APP046 (Munson Depo. Ex. 32). Specifically, GoDaddy

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admitted in an interrogatory response that the “External Domains” feature of its hosting accounts

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is the same “routing/forward” service it provided for the PETRONASTOWES.NET domain name

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and that GoDaddy provides this service for “domains registered elsewhere (not with GoDaddy).”

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APP016 (GoDaddy’s Response to Interrogatory No. 24 at 7:7-11); APP043 (PET GD 002469).

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On its website, GoDaddy describes its domain name forwarding service for its hosting customers

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as allowing those hosting customers to “automatically send your website’s visitors to a chosen

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destination, either a different location within the same site or a new site entirely,” which is

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precisely what its domain name forwarding service did for PETRONASTOWERS.NET. APP046

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(Munson Depo. Ex. 32). It is undisputed that GoDaddy provides hosting services to customers for

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use with domain names that have registrars other than GoDaddy. APP047 (Anderson Depo.

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(10/13/2011) at 15:5-19); APP051 (GD-002453).

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Because the undisputed evidence establishes that GoDaddy’s domain name forwarding
service is not related and not necessary for the registration or maintenance of domain names, and

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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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is provided for domain names of GoDaddy’s customers for which GoDaddy is not the registrar,

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the so-called “safe harbor” of the ACPA and the Lockheed line of cases does not apply.

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II.

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GODADDY COMMITTED CONTRIBUTORY CYBERSQUATTING AS TO
PETRONASTOWERS.NET

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The elements of proof needed to establish a cause of action for contributory cybersquatting

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are well settled. The plaintiff must establish that the defendant continued to supply its products or

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services to one who the defendant knew or had reason to know was using its services to engage in

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trademark infringement. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., --F.3d-- (9th Cir.

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2011), 2011 WL 4014320, *3 (9th Cir. Sept. 9, 2011) (citing Inwood Labs., Inc. v. Ives Labs., Inc.,

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456 U.S. 844, 854, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982). With respect to contributory

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cybersquatting in particular, the knowledge prong includes both the specific identity of the third

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party and sufficient evidence that the third party was engaged in cybersquatting. Solid Host, NL v.

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Namecheap, Inc., 652 F. Supp.2d 1092, 1104 (C.D. Cal. 2009) (“Where the demand [from a

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trademark owner] is accompanied by sufficient evidence of a violation, the defendant may have a

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duty to investigate.”). In addition, the plaintiff must establish that the defendant had “[d]irect

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

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trademark. Lockheed, 194 F.3d at 984 (9th Cir.1999) (holding that the court must consider “the

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extent of control exercised by the defendant over the third party’s means of infringement”).

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A.

The Registrant of PETRONASTOWERS.NET Engaged in Direct
Cybersquatting

The Registrant committed direct cybersquatting from May 2, 2009 to August 30, 2010 by

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using GoDaddy’s domain name forwarding service to direct internet traffic from the domain name

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PETRONASTOWERS.NET to a pornographic website. The Registrant’s direct cybersquatting is

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established by the undisputed facts proving each element of a violation of 15 U.S.C. §

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1125(d)(1)(A): (1) the Petronas mark was “distinctive at the time of registration of the domain

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name” PETRONASTOWERS.NET; (2) the domain name PETRONASTOWERS.NET “is

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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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identical or confusingly similar to [Petronas’s] mark”; and (3) the Registrant “had a bad faith

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intent to profit from [the Petronas] mark.”

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First, the Petronas mark is inherently distinctive because it is a fanciful mark using the

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“coined word” PETRONAS. Official Ariline Guides, Inc. v. Goss, 6 F.3d 1385, 1390-91 (9th Cir.

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1993) (“A fanciful mark is a coined word or phrase, such as Kodak, invented solely to function as

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a trademark.”). The Petronas mark has been owned by Petronas since at least December 28, 2001,

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and was distinctive at the time the domain name PETRONASTOWERS.NET was registered on

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May 8, 2003. APP053 (Gaik Depo. Ex. 13 (U.S. Trademark Reg. No. 2,969,707 filed December

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28, 2001); APP058 (Slafsky Decl. Ex. A at GD-001596).

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Second, the domain name PETRONASTOWERS.NET “is identical or confusingly similar

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to” the Petronas mark. The Court’s August 27, 2010 Order in Case No. 10-03052 PJH (Doc. No.

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11) transferring the domain name PETRONASTOWERS.NET (which was based on the reasons

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set forth in Petronas’s unopposed motion (Doc. No. 9)) established that the Registrant’s use of the

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domain name PETRONASTOWERS.NET was likely to cause confusion with the Petronas mark.

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APP067 (Order at 1:2-3); APP071 (Mtn. at 2:20-3:1). The Court thus held that

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PETRONASTOWERS.NET violated Petronas’s rights as “the owner of a mark registered in the

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Patent and Trademark Office or protected under subsection (a) [false designation of origin] or (c)

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[dilution] [of 15 U.S.C. § 1125].” APP067 (Order at 1:2-3); APP071 (Mtn. at 2:20-3:1).

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Third, the undisputed evidence establishes that six of the nine factors identified in the

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ACPA as indicative of a registrant’s bad faith intent are met with respect to the Registrant of

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PETRONASTOWERS.NET:

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[Petronas’s] online line location to a site accessible under the domain name

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[PETRONASTOWERS.NET] that could harm the goodwill represented by the mark,

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either for commercial gain or with the intent to tarnish or disparage the mark, by creating a

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likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the

The Registrant had an “intent to divert customers from the mark owner’s

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PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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mark.” 15 U.S.C. § 1125(d)(1)(B)(i)(V). Specifically, the Registrant diverted customers

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from Petronas’s online locations (PETRONASTWINTOWERS.COM.MY,

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PETRONASTWINTOWERS.COM, WWW.PETRONAS.COM.MY,

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WWW.PETRONAS.COM, WWW.PETRONAS.ORG, WWW.PETRONAS.MY) to

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PETRONASTOWERS.NET. APP088 (Manokaran Decl. at ¶¶ 4 and 5 (GD-000699)).

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The site to which the Registrant used GoDaddy’s domain name forwarding service to

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divert internet traffic from PETRONASTOWERS.NET was located at

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CAMFUNCHAT.COM, a domain name for which the Registrant was also the registrant.

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APP091-92 (GD-0001326); APP104 (GD-000622). In addition, the Registrant used the

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“masking” option within GoDaddy’s domain name forwarding service to cause internet

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users clicking on “PETRONASTOWERS.NET” not to see the domain name

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“CAMFUNCHAT.COM” in their web browser’s address bar and instead to see

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“PETRONASTOWERS.NET,” thus intentionally amplifying the likelihood of confusion.

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APP040 (GD-000560).

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

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others that are distinctive at the time of registration.” 15 U.S.C. § 1125(d)(1)(B)(i)(VIII).

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In particular, the Registrant registered or acquired at least two domain names,

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PETRONASTOWERS.NET and PETRONASTOWER.NET, which are identical or

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confusingly similar to Petronas’s marks. APP014-15 (GoDaddy’s Response to

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Interrogatory No. 22).

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property rights . . . in the domain name” PETRONASTOWERS. 15 U.S.C. §

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1125(d)(1)(B)(i)(I). Despite multiple emails, Federal Express letters, and attempts at

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telephonic notification of Petronas’s trademark claims regarding the domain names at

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issue, the Registrant never responded, much less provided any suggestion that he or she

The Registrant engaged in the “registration or acquisition of multiple domain

The Registrant does not—and did not—have any “trademark or other intellectual

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Case No: 09-CV-5939 PJH

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had any intellectual property rights in the domain names. APP072-73 (Motion at 3:22-4:9

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(Doc. No. 9)). It also appears that GoDaddy sent a notification to the Registrant of

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Petronas’s trademark claims and that the domain names were “locked” (and that GoDaddy

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charged the Registrant a $10 fee related to the claims), but that GoDaddy is not aware of

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any response from the Registrant of any kind, much less a response asserting intellectual

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property rights in PETRONASTOWERS.NET. APP039 (GD-000302); APP030-33

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(Anderson Depo. at 44:23-45:2, 65:23-66:2).

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of the person [Registrant] or a name that is commonly used to identify that person

The domain name PETRONASTOWERS.NET does not “consist of the legal name

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[Registrant].” 15 U.S.C. § 1125(d)(1)(B)(i)(II). The name of the Registrant in the official

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“Whois” database for PETRONASTOWERS.NET was “Heiko Schoenekess.” APP092-93

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(GD-001327-28). There is no connection of any kind between the name of the Registrant

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and the domain name PETRONATOWERS.NET.

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in a site accessible under the domain name” PETRONASTOWERS.NET. 15 U.S.C. §

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1125(d)(1)(B)(i)(IV). The website the Registrant linked to PETRONASTOWERS.NET

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was pornographic and was neither noncommercial nor any kind of fair use. APP056

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(Slafsky Decl. at ¶ 5 (GD-001594)); APP112 (GD-002870); APP113 (GD-002978);

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APP114 (GD-001804).

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domain name registration is . . . distinctive.” 15 U.S.C. § 1125(d)(1)(B)(i)(IX).

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In summary, the foregoing undisputed evidence shows that six of the nine factors in 15

The Registrant did not make any “bona fide noncommercial or fair use of the mark

As set forth above, Petronas’s “mark incorporated into the person’s [Registrant’s]

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U.S.C. § 1125(d)(1)(B)(i) support a finding that the Registrant had a bad faith intent in using the

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domain name PETRONASTOWERS.NET.

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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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2

B.

GoDaddy’s Domain Name Forwarding Service Was the Instrumentality Used
By The Registrant To Engage In Direct Cybersquatting

On May 2, 2009, the Registrant of the domain name PETRONASTOWERS.NET “logged

3

into his account on the GoDaddy website and directed the automated system to forward the

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domain name to a pre-existing website [and] GoDaddy’s system the automatically forwarded

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traffic to the existing website.” APP147 (GoDaddy’s Response Interrogatory No. 16 at 16:19-22).

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The “existing website” was CAMFUNCHAT.COM and contained pornographic material (and was

7

the same website to which PETRONASTOWER.NET was forwarded). APP040-41 (GD-000560-

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561); APP091-92 (GD-0001326-27); APP152 (GD-001899); APP035 (Lewis Decl at ¶7(b));

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APP112 (GD-002870); APP113 (GD-002978). In response to an interrogatory asking GoDaddy

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to “identify and describe in detail . . . the services provided by GoDaddy related to the disputed

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domain names,” the only service GoDaddy identified was “‘forwarding’ the domain name.”

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APP015 (GoDaddy’s Response to Interrogatory No. 16 at 16:3-25)). All of the evidence in the

13

record thus supports the inference that the domain name PETRONASTOWERS.NET only became

14

linked to the pornographic website when GoDaddy began providing its domain name forwarding

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service on May 2, 2009.

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C.

Godaddy Should Have Known The Registrant Was Using Its Domain Name
Forwarding Service To Engage In Cybersquatting Or Was Willfully Blind To
It

In order to establish that a defendant “should have known” that its services were being

19

used to engage in trademark infringement, a plaintiff must show that the defendant knew or should

20

have known (1) the identity of the direct infringer and (2) that there were specific instances of

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actual infringement. Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 109 (2nd Cir. 2010) (“For

22

contributory trademark infringement to lie, a service provider must have more than a general

23

knowledge or reason to know that its service is being used to sell counterfeit goods. Some

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contemporary knowledge of which particular listings are infringing or will infringe in the future is

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necessary.”). In the context of contributory cybersquatting, the scope of a defendant’s knowledge

26

must “include sufficient evidence of a violation,” including that there was use of “a domain name

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similar or identical to [plaintiff’s] mark” and a “bad faith intent to profit from [plaintiff’s] mark.”

2

Solid Host, NL, 652 F. Supp.2d at 1104.

3

Alternatively, a plaintiff can satisfy the “knew or should have known” prong by

4

establishing that the defendant was “willfully blind,” which “is equivalent to actual knowledge for

5

purposes of the Lanham Act.” Tiffany, 600 F.3d at 110. A defendant is “willfully blind” “when it

6

has reason to suspect that users of its service are infringing a protected mark [and] shields itself

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from learning of the particular infringing transactions by looking the other way.” Id., citing Hard

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Rock Café Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143, 1149 (7th Cir. 1992) (“To

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be willfully blind, a person must suspect wrongdoing and deliberately fail to investigate.”).

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Although “mere receipt of a demand from a third party will not generally suffice to provide notice

11

of illegitimate use of a domain name so as to justify the imposition of contributory liability . . .

12

[w]here the demand is accompanied by sufficient evidence of a violation, the defendant may have

13

a duty to investigate.” Solid Host, NL, 652 F. Supp.2d at 1104.

14

Here, the undisputed facts establish that GoDaddy “should have known” of the

15

Registrant’s cybersquatting or was willfully blind to it because GoDaddy (1) knew the specific

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identity of the Registrant and (2) was in possession of facts establishing that the Registrant was

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committing cybersquatting.

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1.

GoDaddy Knew The Specific Identity of the Registrant Accused of
Direct Cybersquatting As To PETRONASTOWERS.NET

On June 14, 2010, counsel for Petronas informed counsel for GoDaddy that

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PETRONASTOWERS.NET was linked to the same pornographic website as

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PETRONASTOWER.NET. APP155 (GD-001930). Petronas submitted a formal claim pursuant

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to GoDaddy’s trademark policy on July 7, 2010 regarding PETRONASTOWERS.NET identifying

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the Registrant of PETRONASTOWERS.NET by name, address, telephone number, and email

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address. APP092-95 (GD-001327-1330). GoDaddy acknowledged receiving the complaint and

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responded that it would not “process” the claim. APP091-92 (GD-001326-27).

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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

2.

1

Godaddy Was In Possession Of Facts Proving That The Registrant
Was Engaged In Cybersquatting

2
GoDaddy had information in its possession showing that the Registrant was committing
3
cybersquatting, including facts proving (1) that the Registrant’s use of the domain name
4
PETRONASTOWERS.NET was confusingly similar to Petronas’s mark and (2) that the
5
Registrant had a bad faith intent to profit from the Petronas mark.
6
GoDaddy had ample information demonstrating that Registrant’s use of
7
PETRONASTOWERS.NET was confusingly similar to Petronas’s mark, including this Court’s
8
Order requiring GoDaddy to transfer PETRONASTOWER.NET to Petronas because, among other
9
things, that domain name was “likely to cause confusion” with Petronas’s mark. APP157 (Order
10
5/13/2010 at 2:2-3 (GD-001923)); APP161 (Motion at 4:17-20)). The Court ordered GoDaddy to
11
transfer PETRONASTOWER.NET on May 13, 2010, more than one month before GoDaddy
12
received Petronas’s formal notice regarding PETRONASTOWERS.NET. Id.; APP092 (GD13
001327-28).
14
GoDaddy also was in possession a substantially body of facts establishing that the
15
Registrant had a bad faith intent to profit from Petronas’s mark with the domain name
16
PETRONASTOWERS.NET, including all of the facts set forth in Section II(A), above,
17
establishing six of the nine ACPA factors supporting the conclusion that the Registrant had a bad
18
faith intent.
19
Despite GoDaddy’s awareness of this information, GoDaddy deliberately refused to
20
investigate whether the Registrant was committing cybersquatting. According to GoDaddy’s Fed.
21
R. Civ. P. 30(b)(6) witness regarding its trademark policy and handling of Petronas’s claim
22
regarding PETRONASTOWERS.NET, GoDaddy maintained a policy against investigating any
23
claim of trademark of infringement that GoDaddy decided was related to “content not hosted on
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GoDaddy’s servers.” APP177-79 (Hanyen 10/12/2011 Depo. at 17:24-19:19); APP168 (Hanyen
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Depo. Ex. 15 at GD-000573). Although Petronas provided all of the information GoDaddy would
26
have needed under its policy to investigate a claim regarding “content hosted on GoDaddy’s
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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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servers,” GoDaddy refused to do so for PETRONASTOWERS.NET. APP091-92 (GD-001326).

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As such, GoDaddy simply ignored all of the information cited above that put it on notice of

3

Registrant’s cybersquatting (the Court’s order transferring PETRONASTOWER.NET, that the

4

registrant was the same for both disputed domain names, that both domain names were forwarding

5

to the same website, Petronas’s formal notice of trademark infringement, etc.). APP180 (Hanyen

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Depo. (10/13/2011) at 28:2-25).

7

Moreover, GoDaddy’s prior experience handling trademark claims should have led it to

8

suspect that the Registrant was engaged in trademark infringement because, for the trademark

9

claims that GoDaddy had actually chosen to investigate, the “vast majority” of them resulted in

10

GoDaddy deciding to stop providing its services to the customers in question. APP181-82

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(Hanyen Depo. (10/13/2011) at 51:11-52:11). And only an “extremely low” percentage of such

12

customers submitted a “counter-notification” to GoDaddy disputing that they had committed

13

infringement. Id.

14

In light of the foregoing, GoDaddy at least had reason to suspect that the Registrant

15

identified by Petronas was committing cybersquatting as to PETRONASTOWERS.NET and, by

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deliberately failing to investigate Petronas’s allegation, was willfully blind.

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D.

Godaddy Exercised Direct Control And Monitoring Of Its Domain Name
Forwarding Service, Which Was The Instrumentality Used To Engage In
Cybersquatting

19

Where, as here, the alleged contributory trademark infringement is based on the provision

20

of a service, the plaintiff must prove that the defendant “had direct control and monitoring of the

21

instrumentality used by a third party to infringe” the plaintiff’s mark. Louis Vuitton, --F.3d-- (9th

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Cir. 2011), 2011 WL 4014320, *3 (9th Cir. Sept. 9, 2011) (affirming judgment of contributory

23

infringement against defendants that “had control over the services and servers provided to the

24

websites. Stated another way [defendants] had direct control over the ‘masterswitch’ that kept the

25

websites online and available.”). With respect to infringement by domain names, the focus of the

26

“direct control and monitoring” inquiry is on “the registrant’s use of [the domain] name on a web

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PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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site or other Internet form of communication in connection with goods or services.” Lockheed

2

Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984-985 (9th Cir. 1999) (holding that a

3

registrar who simply registered a domain name did not have “direct control and monitoring” of the

4

registrant’s means of infringement because a registrar’s “involvement with the domain names does

5

not extend beyond registration.”).

6

Here, the instrumentality used by the Registrant to commit cybersquatting as to

7

PETRONASTOWERS.NET was GoDaddy’s domain name forwarding service. It is undisputed

8

that on May 2, 2009 GoDaddy began providing its domain name forwarding service for the

9

domain name PETRONASTOWERS.NET. APP040-41 (GD-00560). It is also undisputed that

10

GoDaddy’s domain name forwarding service caused internet traffic to be routed to the

11

pornographic website at CAMFUNCHAT.COM and “masked” the CAMFUNCHAT.COM

12

domain name with the PERTONASTOWERS.NET domain name. APP40-41 (GD-00560).

13

There also can be no dispute that GoDaddy had direct control over its domain name

14

forwarding service. GoDaddy employees wrote the code and created the software application that

15

implemented GoDaddy’s domain name forwarding service. APP187-88 (Munson Depo. at 12:-

16

16:10). And GoDaddy’s domain name forwarding service was implemented with servers owned

17

and exclusively controlled by GoDaddy. APP186 (Munson Depo. at 9:3-12:12).

18

In addition, GoDaddy was able to monitor the operation of its domain name forwarding

19

service as to PETRONASTOWERS.NET. When Petronas filed its formal trademark complaint on

20

July 7, 2010, GoDaddy was able to immediately determine that it was using its domain name

21

forwarding service to link PETRONASTOWERS.NET to the website at CAMFUNCHAT.COM

22

and to provide detailed information technical information about that website. APP091-92

23

(Hanyen Depo. Ex. 22 at GD-001342-1346). GoDaddy also knew as of at least December 21,

24

2009, that CAMFUNCHAT.COM was owned by and had the same registrant as

25

PETRONASTOWER.NET. APP104 (GD-000622). And GoDaddy knew that Petronas had

26

submitted a trademark infringement complaint regarding PETRONASTOWER.NET, which had

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Case No: 09-CV-5939 PJH

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the same Registrant and forwarded to the same website at CAMFUNCHAT.COM, and that the

2

Court had ordered that domain name transferred to Petronas. APP202 (Hanyen Depo. Ex. 24 at

3

GD-001312-1314); APP104 (GD-000622); APP157 (5/13/2010 Order); APP158 (3/25/2010

4

Motion (Doc. No. 7)).

5

In light of the foregoing, there should be no genuine dispute that GoDaddy exercised

6

“direct control and monitoring” over the instrumentality—its domain name forwarding service—

7

used by the Registrant to engage in cybersquatting as to PETRONASTOWERS.NET.

8

CONCLUSION

9

For the reasons set forth above, Petronas respectfully requests that the Court grant partial

10

summary judgment of GoDaddy’s liability for contributory cybersquatting or, in the alternative,

11

enter an order finding all or some of the material facts established herein are undisputed.

12

Dated: November 2, 2011

LAW OFFICES OF PERRY R. CLARK

13
By:

/s/ Perry R. Clark
.
Perry R. Clark
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD
(PETRONAS)

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MEM. ISO P.’S MTN. FOR
PARTIAL SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH