Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 139

REPLY (re 112 MOTION for Summary Judgment Notice of Motion, Motion, and Memorandum of Points and Authorities ISO Go Daddy's Motion for Summary Judgment ) Reply Memorandum of Points and Authorities in Further Support of Go Daddy's Motion for Summary Judgment filed byGoDaddy.com, Inc.. (Slafsky, John) (Filed on 11/23/2011)

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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]
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.,
Counterclaimant,
vs.
PETROLIAM NASIONAL BERHAD,
Counterclaim Defendant.

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REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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CASE NO.: 09-CV-5939 PJH

REPLY MEMORANDUM OF
POINTS AND AUTHORITIES IN
FURTHER SUPPORT OF GO
DADDY’S MOTION FOR SUMMARY
JUDGMENT

Date:
Time:
Courtroom:

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

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TABLE OF CONTENTS

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Page

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TABLE OF AUTHORITIES ..........................................................................................................ii

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I.

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

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II.

ARGUMENT ......................................................................................................................1

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A.

GO DADDY IS NOT LIABLE FOR CYBERSQUATTING.................................1

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1.

Go Daddy Did Not “Use” The Disputed Domains .....................................1

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2.

There Is No Evidence That Go Daddy Had A Bad Faith Intent To
Profit From Petronas’s Trademark ..............................................................2

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i.

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B.

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Go Daddy Had No Intent To Profit From Petronas’s Mark ............2

ii.

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Go Daddy’s Maintenance Of The Status Quo Was
Reasonable, Appropriate, and In Good Faith ..................................3

GO DADDY IS NOT LIABLE FOR CONTRIBUTORY
CYBERSQUATTING.............................................................................................5
1.

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Go Daddy Did Not Exercise “Direct Control and Monitoring” over
the Alleged Cybersquatting.........................................................................8

5.

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Petronas’s Evidence Is Inadequate to Establish Cybersquatting By
The Non-Party Registrant............................................................................6

4.

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Petronas is Wrong that Courts Apply The Same Tests for
Contributory Infringement and “Contributory Cybersquatting” .................6

3.

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A Claim for Contributory Cybersquatting Does Not Exist Under the
Circumstances of this Case .........................................................................5

2.

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Go Daddy Was Not Willfully Blind to Alleged Cybersquatting.................9

C.

GO DADDY IS PROTECTED BY THE SAFE HARBOR OF THE ACPA
AND ENSUING CASE LAW ..............................................................................10

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D.

PETRONAS HAS ABANDONED ITS UNFAIR COMPETITION CLAIM ......13

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E.

PETRONAS’S TRADEMARK REGISTRATION SHOULD BE
CANCELLED .......................................................................................................13

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III.

CONCLUSION .................................................................................................................15

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MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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TABLE OF AUTHORITIES

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Page(s)

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CASES

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Abdul-Jabbar v. Gen. Motors Corp.,
85 F. 3d 407 (9th Cir. 1996)........................................................................................ 13, 14

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Auburn Farms Inc. v. McKee Food Corp.,
No. 22060, 1999 WL 588247 (T.T.A.B. 1998)................................................................. 14

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Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc.,
892 F.2d 1021 (Fed. Cir. 1989)......................................................................................... 14

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Competition Specialties, Inc. v. Competition Specialties, Inc.,
87 F. App’x. 38 (9th Cir. 2004)....................................................................................... 7, 8

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Fonovisa Inc. v. Cherry Auction, Inc.,
76 F.3d 259 (9th Cir. 1996)........................................................................................... 5, 10

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Ford Motor Co. v. Greatdomains.com, Inc.,
177 F. Supp. 2d 635 (E.D. Mich. 2001) .......................................................................... 6, 7

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Hard Rock Cafe Licensing Corp. v. Concession Serv., Inc.,
955 F.2d 1143 (7th Cir. 1992)............................................................................................. 5

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In re Supply Guys, Inc.,
86 USPQ 2d 1488 (TTAB 2008)....................................................................................... 15

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Inwood Labs., Inc. v. Ives Lab., Inc.,
456 U.S. 844 (1982) ............................................................................................................ 5

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Jenkins v. County of Riverside,
398 F.3d 1093 (9th Cir. 2005)........................................................................................... 13

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Lockheed Martin Corp. v. Network Solutions, Inc.,
141 F. Supp. 2d (N.D. Tex. 2001) (“Lockheed II”)................................................. 4, 12, 13

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Lockheed Martin Corp. v. Network Solutions, Inc.,
194 F.3d 980 (9th Cir. 1999) (“Lockheed I”) ........................................................ 4, 5, 8, 12

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Lockheed Martin Corp. v. Network Solutions, Inc.,
985 F. Supp. 949 (C.D. Cal. 1997),.......................................................................... 4,10, 12

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Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc.,
--F.3d--, 2011 WL 4014320 (9th Cir. Sept. 9, 2011) .................................................... 6, 9

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Meyer v. Holley,
537 U.S. 280 (2003) ............................................................................................................ 5

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Microsoft Corp. v. Shah,
No. C10-0653 RSM, 2011 WL 108954 (W.D. Wash. Jan. 12, 2011)................................. 6

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MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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Perfect 10, Inc. v. Visa Int’l Serv., Ass’n,
494 F.3d 788 (9th Cir. 2007)........................................................................................... 8, 9

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Roxbury Entm’t v. Penthouse Media Group, Inc.,
No. 08 CV 3872 FMC (JWJX), 2009 WL 2950324 (C.D. Cal. Apr. 3, 2009) ................. 13

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Shakur v. Schriro,
514 F.3d 878 (9th Cir. 2008)............................................................................................. 13

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Solid Host, NL v. NameCheap, Inc.,
652 F. Supp.2d 1092 (C.D. Cal. 2009).......................................................................... 6, 10

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Unuson Corp. v. Built Entm’t Group, Inc.,
No. C 05-0305 MHP, 2006 WL 194052 (N.D. Cal. Jan. 23, 2006).................................. 14

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Verizon California, Inc. v. OnlineNIC, Inc.,
647 F. Supp. 2d 1110 (N.D. Cal. 2009) ............................................................................ 10

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World Market Center Venture, LLC v. Texas Int’l Prop. Assocs.,
No. 208-CV-01753-RCJ-GWF, 2009 WL 3303758 (D. Nev. Oct. 14, 2009) .................. 13

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STATUTES
15 U.S.C. § 1114(2)(D)(i) ............................................................................................................. 13
15 U.S.C. § 1114(d)(D)(iii)........................................................................................................... 10
15 U.S.C. § 1125(d) ........................................................................................................................ 8
15 U.S.C. § 1125(d)(1)(A)(i) .......................................................................................................... 2
15 U.S.C. § 1125(d)(1)(B)(i)(V) ..................................................................................................... 7
15 U.S.C. § 1125(d)(1)(B)(ii)...................................................................................................... 3, 4
15 U.S.C. §1125(d)(1)(D) ............................................................................................................... 1
15 U.S.C. § 1127 ........................................................................................................................... 13
MISCELLANEOUS
S. Rep. 106-140 (Aug. 5, 1999) ...................................................................................................... 1
Trademark Manual of Examining Procedure § 1604.13 ............................................................... 14

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REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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I.

INTRODUCTION

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As Petronas’s opposition makes clear, there is not a scintilla of evidence that Go Daddy

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has used the Disputed Domains or acted in bad faith, let alone acted with a bad faith intent to

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profit from Petronas’s trademark. Nor is there any support for the proposition that Go Daddy’s

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continued provision of domain name forwarding services is an exceptional circumstance giving

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rise to a so-called “contributory cybersquatting” claim. In particular, Petronas’s suggestion in its

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opposition that Go Daddy should be found liable based on “refus[ing] to stop forwarding the

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Disputed Domains after being put on notice of the infringement of Petronas’s trademarks” (Opp.

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at 8)1 is contradicted by a host of decisions before and after the passage of the Anti-

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Cybersquatting Consumer Protection Act (“ACPA”). The Court should not accept the dramatic

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expansion of registrar liability sought by Petronas.

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With respect to Petronas’s federal trademark registration, the Court should cancel it

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because the documents on which Petronas now relies clearly do not support the registration.

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II.

ARGUMENT

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A.

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GO DADDY IS NOT LIABLE FOR CYBERSQUATTING
1.

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Go Daddy Did Not “Use” The Disputed Domains

Petronas acknowledges that, to prevail on its cybersquatting claim, it must prove that Go

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Daddy “used” the Disputed Domains as the “registrant’s authorized licensee.” Opp. at 7; 15

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U.S.C. §1125(d)(1)(D). However, Go Daddy’s maintenance of the status quo by continuing to

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forward the Disputed Domains does not amount to “use” of those domain names under even the

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most generous definition. Go Daddy merely provided the infrastructure for the registrant to route

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the Disputed Domains to the website of his choosing. As the legislative history of the ACPA

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makes evident, such conduct is not considered “use.” S. Rep. 106-140, at 8-9 (“The concept of

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‘use’ does not extend to uses of the domain name made by those other than the domain name

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registrant, such as the person who includes the domain name as a hypertext link on a web page or

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In addition to the citation forms defined in the prior papers, citations to Go Daddy’s Brief in
Support of its Motion for Summary Judgment will be in the form “MSJ at __.” Citations to
Plaintiff’s Opposition will be in the form “Opp. at __.” Citations to Go Daddy’s Opposition to
Plaintiff’s Motion for Partial Summary Judgment will be in the form “GDOpp. at __.”
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MOTION FOR SUMMARY JUDGMENT
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as part of a directory of Internet addresses.”).

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Ignoring that there is no underlying “use,” Petronas argues that agreements between Go

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Daddy and the registrant somehow gave Go Daddy a “license” to use the Disputed Domains. Opp.

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at 7-8. It simply does not follow, though, that Go Daddy’s contractual right to terminate service

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equates to a license to use the registrant’s domain names. Id. Nor does the fact that the registrant

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can “us[e Go Daddy’s] systems to forward a domain” imply that Go Daddy has a reciprocal license

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to use the registrant’s domain names. Id. at 7. Petronas’s argument that Go Daddy used the

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domains and was licensed by the registrant to do so makes no sense and is wholly unsupported by

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evidence.2

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2.

There Is No Evidence That Go Daddy Had A Bad Faith Intent
To Profit From Petronas’s Trademark

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i.

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Go Daddy Had No Intent To Profit From Petronas’s Mark

There is no evidence to suggest that Go Daddy had any intent to profit from Petronas’s

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trademark, let alone the requisite bad faith intent to profit from it. In fact, Petronas does not even

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attempt to show intent to profit specifically from Petronas’s trademark, as is required. 15 U.S.C. §

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1125(d)(1)(A)(i)); see also MSJ at 15 (citing cases).

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Petronas claims that Go Daddy’s conduct – the continued forwarding of the Disputed

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Domains – was motivated by customer demand. Opp. at 11-13. According to Petronas, “[h]ad

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GoDaddy stopped providing domain name forwarding for the Disputed Domains because of

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Petronas’s complaint of cybersquatting,” it would have had to stop providing forwarding

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“whenever that feature was the basis of a trademark complaint.” Id. at 13. Thus, Petronas

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contends, “because domain names incorporating well known trademarks ... logically generate

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larger amounts of Internet traffic, GoDaddy would have risked losing a substantial number of

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customers using its 301 redirect forwarding service.” Id. This argument not only lacks any

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connection to the Petronas trademark, but also is based on a flawed premise: that Go Daddy

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Not even Petronas’s corporate representative believes that a registrar is entitled to “use” a
registrant’s domain name. Fiorino, Ex. 1 (Gaik, 29:2-30:5).
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profited from customers using its forwarding service. In fact, Go Daddy provided domain name

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forwarding for free as part of its overall registration services. See Roling, ¶ 2; Lansky, Ex. 4

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(Hertz, 14:4-17).

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Petronas’s related argument that Go Daddy sought to profit, in violation of the ACPA, by

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establishing immunity from liability is similarly untenable. Opp. at 13-15. Essentially, Petronas

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claims that Go Daddy refused to stop forwarding the Disputed Domains so as to instigate a lawsuit,

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which Go Daddy would win, thereby setting a precedent establishing its immunity for conduct

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which “is the same as GoDaddy’s conduct with respect to as many as 9,000 other domain names

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over the past nine years.” Id. This precedent, Petronas’s argument goes, might preserve Go

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Daddy’s corporate profitability generally, and thus would trigger the “intent to profit” requirement

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of the statute. This is a preposterous argument. There is no evidentiary support for any aspect of

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this purported scheme, and the alleged intent to profit, or rather to avoid liability, is admittedly not

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tied to Petronas’s mark, as required by law.

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ii.

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Go Daddy’s Maintenance Of The Status Quo Was Reasonable,
Appropriate, and In Good Faith

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There can be no dispute that Go Daddy’s challenged conduct – maintaining the status quo

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following notification of Petronas’s trademark claim – was undertaken in good faith. As detailed

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in Go Daddy’s Motion for Summary Judgment, Go Daddy’s intent in maintaining the status quo

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until receipt of a court order was to comply with its standard operating procedures (“SOP”) and to

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implement ICANN’s Uniform Dispute Resolution Policy (“UDRP”) (upon which its SOP was

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based). MSJ at 14. Go Daddy repeatedly explained to Petronas that, under the UDRP, it does not

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get involved in domain name disputes and instead maintains the status quo 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. Id. at 9.3 The fact that, as Petronas points out, certain witnesses could not

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name the corporate policy applied by Go Daddy, or that Go Daddy generally intended “to provide

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As Petronas’s expert testified, registrars, in her experience, only “take down” domain
names in exceptional circumstances, such as criminal attacks on the Domain Name System
(“DNS”). Fiorino, Ex. 2 (Dam, 107:8-108:9).
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registrar services concerning the [Disputed Domains]” (Opp. at 9-10) in no way calls into question

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Go Daddy’s good faith. In fact, the plain language of the URDP provides “reasonable grounds to

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believe” that Go Daddy’s conduct was “fair ... or otherwise lawful.” 15 U.S.C. §

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1125(d)(1)(B)(ii). There thus can be no liability.

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Moreover, the proposition that Go Daddy should have acted as the arbiter of Petronas’s

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trademark claim – as well as all other trademark claims presented to it (Opp. at 10-11) – is contrary

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to the provisions of the UDRP, controlling case law and common sense. See generally MSJ at 19-

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20. As the Court recognized in Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp.

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949, 963, 966 (C.D. Cal. 1997), aff’d, Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d

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980 (9th Cir. 1999) (“Lockheed I”), registrars are in no position to evaluate whether a registrant’s

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use of a domain name is infringing, and they have no legal duty to do so. This sentiment was

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echoed in Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d, 648, 654-55 (N.D.

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Tex. 2001) (“Lockheed II”):

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Sheer volume alone would prohibit defendant performing the role plaintiff would
assign. Defendant simply could not function as a registrar, or as keeper of the
registry, if it had to become entangled in, and bear the expense of, disputes
regarding the right of a registrant to use a particular domain name.

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Id. at 655. Forcing registrars to implement an expensive, burdensome and likely inaccurate

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process of determining trademark disputes would have a devastating impact on the industry. See,

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e.g. Brief of Amici Curiae of Register.com and Networks Solutions at 7-8; Brief of Amicus Curiae

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eNom, Inc. at 6-10; Fiorino, Ex. 2 (Dam, 104:23-107:7).

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Nor do Go Daddy’s alleged profit motives supply the missing “bad faith” intent. Petronas

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claims that Go Daddy was generally motivated by customer demand for forwarding. Opp. at 11-

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13. But there is nothing nefarious about Go Daddy providing this basic registrar service at the

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request of its customers. Similarly, Go Daddy’s desire to avoid the considerable commercial

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consequences that would befall the domain name industry should registrars be held liable for

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providing services in this manner (Opp. at 13-15) is rational, expected, and plainly not a sign of a

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“bad faith” intent to profit from Petronas’s trademark.

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Case No. 4:09-cv-05939-PJH

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B.

GO DADDY IS NOT LIABLE FOR CONTRIBUTORY CYBERSQUATTING
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A Claim for Contributory Cybersquatting Does Not Exist Under the
Circumstances of this Case

Petronas is correct that Congress enacted the ACPA against the backdrop of existing

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principles of contributory trademark infringement liability. See Opp. at 2. But Congress did not

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enact a new standard for contributory liability, and therefore this Court must presume that it meant

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for only traditional principles to apply. See Meyer v. Holley, 537 U.S. 280, 286-87 (2003). Here,

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Go Daddy’s challenged conduct does not come close to falling within the traditional principles of

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contributory trademark liability.

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Following Inwood Labs., Inc. v. Ives Lab., Inc., 456 U.S. 844, 854 (1982), and before

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enactment of the ACPA, the Seventh and Ninth Circuits recognized, only in exceptional

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circumstances, claims for secondary trademark infringement outside of the context of inducement

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or a manufacturer or distributor of an infringing product. See Fonovisa Inc. v. Cherry Auction,

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Inc., 76 F.3d 259 (9th Cir. 1996); Hard Rock Cafe Licensing Corp. v. Concession Serv., Inc., 955

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F.2d 1143 (7th Cir. 1992). In these cases, the courts permitted the claims because the defendants

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were in the positions of landlords and therefore had a common law duty to prevent torts from being

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committed on their premises once they knew or had reason to know of the tortious conduct. See

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Fonovisa, 76 F.3d at 265; Hard Rock, 955 F.2d at 1149. Here, Petronas has utterly failed to

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explain how Go Daddy’s provision of domain name forwarding services is anything like a lessor or

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landlord of real estate.

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Notably, the Ninth Circuit has already concluded that a company providing an Internet

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routing service does not exercise the type of direct control and monitoring that would justify

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recognition of a contributory infringement claim. See Lockheed I, 194 F.3d at 980. The

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undisputed evidence demonstrates that the service at issue here, domain name forwarding, is a

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form of routing. See Palage, ¶¶ 41-56. Thus, permitting a “contributory cybersquatting” claim

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based on a forwarding service cannot be squared with the Ninth Circuit’s rejection of such a claim

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based on the same conduct in the context of traditional trademark infringement.

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2.

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Petronas is Wrong that Courts Apply The Same Tests for
Contributory Infringement and “Contributory Cybersquatting”

Petronas’s assertion that “[c]ourts apply the same analysis to contributory cybersquatting

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claims as they apply to contributory trademark claims” (Opp. at 2) is plain wrong. No Circuit

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Court has ever addressed the circumstances under which a “contributory cybersquatting” claim

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might exist, let alone the test that would be applied. Louis Vuitton Malletier, S.A. v. Akanoc

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Solutions, Inc., --F.3d--, 2011 WL 4014320 (9th Cir. Sept. 9, 2011), cited by Petronas, involves a

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traditional contributory infringement claim based on the sale of counterfeit goods. See id. at *1-2.

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As for the few district courts to address such a claim, the two cited by Petronas make clear,

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significantly, that a heightened standard of knowledge would need to be applied because the

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underlying offense depends upon a third party’s intent, rather than evident, outward conduct (i.e.

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the sale of infringing products). See Solid Host, NL v. NameCheap, Inc., 652 F. Supp.2d 1092,

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1116 (C.D. Cal. 2009) (“because a defendant in NameCheap’s position may not easily be able to

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ascertain a customer’s good or bad faith, the court agrees with the Ford Motor Co. court that

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‘exceptional circumstances’ must be shown to prove the degree of knowledge required to impose

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contributory liability for cybersquatting”); Ford Motor Co. v. Greatdomains.com, Inc., 177 F.

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Supp. 2d 635, 647 (E.D. Mich. 2001); see also, Microsoft Corp. v. Shah, No. C10-0653 RSM,

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2011 WL 108954, at *2 (W.D. Wash. Jan. 12, 2011). As set forth below in Section II(B)(5), no

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exceptional circumstances are present here.

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3.

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Petronas’s Evidence Is Inadequate to Establish Cybersquatting By
The Non-Party Registrant

Petronas’s contributory cybersquatting claim also fails due to the lack of evidence that the

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registrant of the Disputed Domains has engaged in cybersquatting. Significantly, there has been

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no finding of cybersquatting and no discovery from the registrant, or from others, regarding his

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intent. See MSJ at 17.

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Petronas’s argument that discovery from the registrant would not be probative because he

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would most likely lie (Opp. at 3) misses the point. A determination of cybersquatting requires “the

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weighing of evidence, particularly each individual defendant’s credibility.” Ford, 177 F. Supp. 2d
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at 646. Thus, the opportunity to evaluate the alleged cybersquatter’s explanation is critical. In

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fact, had Petronas sought discovery from the registrant, there would be a record as to whether or

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not the registrant ever had any rights in the Disputed Domains, or was aware of the Petronas

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trademark at the time he registered and used the Disputed Domains. As it stands, there is no proof

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on these, or on several other of the statutory bad faith factors. See GDOpp. at 17. This includes

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the “intent to divert consumers from the mark owner’s online location diverted customers” factor,

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15 U.S.C. § 1125(d)(1)(B)(i)(V), since the record reflects that none of Petronas’s customers has

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ever complained about having been diverted. See GDOpp. at 17.

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Moreover, and contrary to Petronas’s argument, it is far from clear that Petronas ever

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sought to locate the registrant for purposes of obtaining discovery. Petronas relies exclusively on

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papers from the in rem actions, which merely show that Petronas sent copies of the in rem action

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papers to the registrant by both FedEx and email. OPPAPP000018, 123, 141. There is no

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evidence that Petronas tried, but failed, to locate the registrant as contended. Indeed Petronas’s

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own evidence reflects that the papers were delivered to the address provided by the registrant,

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indicating it was a valid address. OPPAPP000152. Nor is there any evidence that Petronas tried

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but was unable to use well-recognized means of obtaining discovery from an individual located in

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another country. That an individual in a foreign country did not respond to a U.S. lawsuit or

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contact Go Daddy to complain about the transfer has no bearing on whether Petronas tried to, or

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could have, obtained discovery from him.4

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Finally, Petronas asks this Court to infer a bad faith intent to profit from Petronas’s mark

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simply because the Disputed Domains have been found to be “confusingly similar” to such mark

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and there is no evidence that the registrant had a legitimate intent. Opp. at 4-5. But there is no

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evidence either way as to the registrant’s actual intent, and use of another’s mark in a domain name

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alone is insufficient to find cybersquatting; if it were, there would be no need for the “bad faith

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intent to profit from [another’s] mark” element of the claim. See, e.g., Competition Specialties,

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Petronas incorrectly claims that Go Daddy refused to produce information regarding the
registrant. Opp. at 4. In fact, Go Daddy produced all such records in its possession (including
account information containing correspondence with the registrant) as well as a witness (Mr.
Bilunes) who testified extensively about the contents of those records.
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Inc. v. Competition Specialties, Inc., 87 F. App’x. 38, 42-43 (9th Cir. 2004).
4.

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

There is no evidence to support a finding that Go Daddy exercised the type of direct control

5

and monitoring of the registrant’s conduct that could give rise to contributory liability. As the

6

Ninth Circuit has already held, domain name registration and routing services are just that –

7

services – and providing registration and routing “does not entail the kind of direct control and

8

monitoring required to justify an extension” of traditional secondary liability principles. Lockheed

9

I, 194 F.3d at 984-85. Unlike a manufacturer or distributor of a product that is palmed off by the

10

party to whom it is delivered, or a landlord or lessor of space at a flea market or swap meet that is

11

used to sell counterfeit goods, Go Daddy has no duty or ability to control and monitor its

12

registrants’ conduct to determine if they are engaged in unlawful behavior. Forwarding is akin to

13

the taxi that merely delivers customers to the flea market where counterfeit goods are sold.

14

Furthermore, Petronas’s suggestion that the registrant’s cybersquatting was not

15

accomplished through selection of the Disputed Domains (which Petronas concedes is not

16

controlled by Go Daddy), but rather by using Go Daddy’s forwarding service, is way off the mark.

17

A claim under the ACPA based upon “use” requires both (1) registration of a domain name that is

18

identical or confusingly similar to another’s trademark, and (2) use of that domain name with the

19

bad faith intent to profit from a trademark. See 15 U.S.C. § 1125(d). In this case, had the

20

registrant registered domain names that did not contain the term “petronas,” there could be no

21

cybersquatting regardless of his use of Go Daddy’s forwarding service. Similarly, had the website

22

to which the Disputed Domains were forwarded contained, for example, a critique of Petronas’s

23

business practices, there would be no cybersquatting claim. Domain forwarding standing alone is

24

not the instrumentality used for cybersquatting.

25

Petronas has presented no evidence that Go Daddy had any control over the registrant

26

either when he registered the Disputed Domains, or when he used Go Daddy’s forwarding service

27

to route Internet users to a third-party website. This is simply not the type of situation that can

28

give rise to contributory liability. Cf. Perfect 10, Inc. v. Visa Int’l Serv., Ass’n, 494 F.3d 788, 807
REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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(9th Cir. 2007) (defendant credit card company, which provided critical support to website hosting

2

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

3

notice from plaintiff, did not exercise the type of “direct control” justifying imposition of

4

contributory trademark liability).

5

Finally, Petronas’s reliance upon Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc. is

6

misplaced. First, that action did not involve a cybersquatting claim, so there was no issue as to

7

whether the defendant exercised any control over the underlying infringer’s intent. Second, the

8

defendant in that action hosted websites that directly infringed the plaintiff’s trademarks, and the

9

claim of contributory infringement was based upon the defendant’s “hosting the websites and

10

willfully permitting websites to display the products.” See Louis Vitton Malletier, S.A., -- F.3d--,

11

2011 WL 4014320, at *1, 2. The instrumentality used by a third party to infringe the plaintiff’s

12

trademarks was the websites that were hosted on the defendant’s servers, which the Court found to

13

be “the Internet equivalent of leasing real estate.” Id. at *3. Thus, because the defendant had

14

direct control over the websites, which were the means of infringement, this element of a

15

contributory infringement claim was met. No such facts are present here.

16
17

5.

Go Daddy Was Not Willfully Blind to Alleged Cybersquatting

As Go Daddy has established, there are no “exceptional circumstances” that would justify

18

imputing to Go Daddy knowledge that the registrant registered and then forwarded the Disputed

19

Domains with a bad faith intent to profit from Petronas’s mark. MSJ at 18-20. Notably, Petronas

20

does not even acknowledge the heightened “exceptional circumstances” requirement, let alone

21

point to any evidence that could meet it; instead, it mistakenly cites to the “reason to suspect”

22

standard from traditional trademark infringement cases. Here, Go Daddy merely received a

23

“trademark claim” demonstrating that someone had registered a domain name that included the

24

trademark owner’s mark. Hanyen, Exs. 9, 11. It directed the claimant to the UDRP procedure,

25

locked the Disputed Domains once Petronas initiated legal proceedings, and transferred the

26

Domain Names to Petronas upon receipt of transfer orders. MSJ at 7-10. This is the standard

27

procedure followed by Go Daddy for over a thousand domain disputes each year (Opp. at 13), and

28

there is nothing exceptional about it.
REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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The law is clear that, where a third party is using a domain name containing another’s

2

trademark, receipt of a demand letter is insufficient to impute knowledge of unlawful use or trigger

3

a duty to investigate. See Lockheed Martin Corp., 985 F. Supp. at 963-64; Solid Host, 652 F.

4

Supp. 2d at 1116. Here, Petronas’s notices did not give Go Daddy a “reason to suspect” that its

5

registrant was engaged in cybersquatting, since they merely provided information demonstrating

6

that someone had registered Domain Names incorporating marks owned by Petronas. This is a far

7

cry from the circumstances of the only case cited by Petronas where the court even suggested the

8

facts could give rise to exceptional circumstances – Fonovisa, 76 F.3d at 261 – in which the

9

Sheriff’s Department had raided the defendant’s property and seized more than 38,000 counterfeit

10
11
12

recordings.
C.

GO DADDY IS PROTECTED BY THE SAFE HARBOR OF THE ACPA
AND ENSUING CASE LAW

13

Petronas recognizes that the ACPA’s safe harbor precludes liability of any “domain name

14

registrar ... for the registration or maintenance of a domain name for another absent a showing of

15

bad faith intent to profit from such registration or maintenance.” Opp. at 15, quoting 15 U.S.C. §

16

1114(d)(D)(iii). It nonetheless argues that Go Daddy’s conduct – maintaining the status quo by

17

continuing to forward the Disputed Domains (Opp. at 8-9) – is somehow outside the functions of a

18

registrar. Solid Host, 652 F. Supp. 2d at 1104-05 (“where the record indicates that a defendant did

19

nothing more than act as a registrar, no liability under § 1125(d) will lie”); Verizon California, Inc.

20

v. OnlineNIC, Inc., 647 F. Supp. 2d 1110, 1126 (N.D. Cal. 2009) (recognizing immunity for

21

registrar acting as registrar). See also Opp. at 16 (citing cases for proposition that immunity is

22

applicable where the “registrar is acting as a registrar”).

23

The evidence overwhelmingly establishes that Go Daddy was indeed acting as a registrar

24

when it provided forwarding services to the Disputed Domains (as well as to the 8.2 million other

25

domains using its forwarding service (Roling, ¶ 13)). As detailed in Go Daddy’s opening brief,

26

forwarding is simply a form of routing and is almost universally offered by registrars as part of

27

domain name registration services. MSJ at 21; Palage, ¶¶ 41-56. Indeed, the recognition of

28

forwarding as a basic registrar service is echoed throughout the record, as well as by the three
REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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amici curiae who filed briefs in support of Go Daddy’s instant Motion for Summary Judgment,

2

and in countless online sources and several judicial opinions. See GDOpp. at 12-13.

3

Petronas cites to reports by two expert witnesses, Tina Dam and Kevin Fitzsimmons, to

4

support its argument that domain name forwarding is not part of registration or maintenance

5

services. Neither of these reports, however, is persuasive.5 Both experts testified that selection of

6

a name server for routing or forwarding is an essential part of the domain name registration

7

process (Fiorino, Exs. 3 (Fitzsimmons, 47:5-48:21, 54:16-55:9) & 2 (Dam, 121:12-122:23)); that

8

resolution of domain names is impossible without registrars identifying servers in this manner (id.,

9

Exs. 2 (Dam, 114:5-118:13) & 3 (Fitzsimmons, 48:12-25, 57:14-21)); that routing or forwarding is

10

a wholly automated process in which registrars act at the initiative of their customers (id., Exs. 2

11

(Dam, 115:20-116:25) & 3 (Fitzsimmons, 65:2-14)); and that forwarding services are routinely

12

used by businesses and individuals for important, legitimate purposes. Id., Exs. 2 (Dam, 118:24-

13

121:5) & 3 (Fitzsimmons, 14:7-15). In addition, the specific opinion of Ms. Dam highlighted by

14

Petronas in its opposition – that forwarding is distinct from “initial registration” of a domain name

15

– is immaterial to the immunity analysis.

16

In contrast, Go Daddy’s expert witness, Michael Palage – a lawyer, engineer, former

17

member of ICANN’s Board of Directors, and one of the drafters of the UDRP (Palage, ¶¶ 2-11) –

18

significantly undermines Petronas’s argument. Mr. Palage, in reaching his opinion, considered the

19

allegations in the First Amended Complaint, the Court’s record in this lawsuit, the legislative

20

history of the ACPA, the ACPA, court decisions interpreting the ACPA, the evolution of the

21

domain name business, public information about the forwarding practices of registrars with over

22

65% market share, as well as his considerable business experience working with both registries

23

and registrars. See Palage, ¶¶ 8, 12. Mr. Palage opines that the services rendered by Go Daddy in

24
25
26
27
28

5

It is significant that, according to deposition testimony and Petronas’s expert reports, neither
of the expert witnesses reviewed both the claims and defenses in this matter (Fiorino, Exs. 2 (Dam,
110:5-112:10) & 3 (Fitzsimmons, 67:6-68:24)); neither reviewed the ACPA or the case law
construing it (id., Ex. 2 (Dam, 103:6-104:1)); neither has trademark law expertise (id., Exs. 2
(Dam, 74:1-4, 77:21-24, 79:6-11, 80:1-4, 81:11-16) & 3 (Fitzsimmons, 29:20-22, 30:22-24, 31:911, 32:1-3 & 21-23)); and neither was the primary drafter of the expert report (instead, the reports
were apparently drafted by Petronas’s counsel). Id., Ex. 2 (Dam, 40:18-50:7).
REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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this matter “are the very type of services intended to fall within the registrar safe harbor provision

2

set forth in the [ACPA] ...” and that “there has been no bad faith in connection with the domain

3

name registration or resolution services that Go Daddy has provided with respect to [the Disputed

4

Domains].” Palage, ¶¶ 14-15. Mr. Palage has also prepared a detailed rebuttal report addressing

5

the opinions of Petronas’s experts. Fiorino, Ex. 4.

6

Finally, Go Daddy’s immunity from Petronas’s claims is even more apparent upon close

7

examination of the Lockheed cases, which Petronas, again, tries urgently to distinguish. The fact

8

that, as Petronas points out, the registrar-defendant in those cases, Network Solutions6, also acted

9

as a registry does not alter this analysis. The Lockheed decisions are not based upon Network

10

Solutions’ dual role as registrar and registry, but rather upon its actions – the registration and

11

routing of domain names corresponding to plaintiff’s trademark. They hold, unequivocally, that

12

there is no direct or secondary liability based on such conduct.

13

As to Lockheed I, Petronas mischaracterizes the court’s decision and takes quotes out of

14

context. First, nowhere in the district court or appellate decisions are any determinations qualified

15

by the fact that Network Solutions happened also to serve as a registry. Second, in context, the

16

district court quote now highlighted by Petronas – that the registrar was not involved in “linking

17

domain names with potentially infringing resources such as Web sites” – merely indicates that

18

Network Solutions, like Go Daddy here, had no role in deciding to link the disputed domain name

19

with the allegedly infringing website; the registrant alone made that decision, and then instructed

20

the passive registrar to route Internet traffic accordingly. Lockheed Martin Corp., 985 F. Supp. at

21

961-962 (internal citations omitted). Third, in context, the other quote highlighted by Petronas –

22

that “[a]fter a domain name is registered, [the registrar’s] involvement is over” (id. ) – merely

23

emphasizes that the registrar was not involved in placing infringing content at the destination

24

website, or in the decision to point a domain name there.

25
26

Importantly, the subsequent Lockheed II decision takes into account Congress’s passage of
the ACPA. The ACPA safe harbor, intended to codify Lockheed I, applies broadly to “a domain

27
28

6

Network Solutions has filed amicus papers in support of Go Daddy’s summary judgment
motion.
REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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name registrar or domain name registry or other domain name authority.” 15 U.S.C.

2

§ 1114(2)(D)(i). Petronas’s argument that the Lockheed II decision is “completely inapplicable”

3

because Network Solutions “performed any ‘routing’ . . . by virtue of its function as a registry”

4

(Opp. at 19) is flatly contradicted by the wording of the decision: “[h]aving studied the [ACPA] in

5

the light of the summary judgment record, the court cannot conclude that it creates a cause of

6

action against the defendant as a domain name registrar or registry.” Lockheed II, 141 F.Supp.2d

7

at 654 (emphasis added).

8

D.

9

Go Daddy is entitled to summary judgment on Petronas’s unfair competition claim

10

because, by failing to respond to Go Daddy’s motion as to that claim, Petronas has abandoned it.

11

See Jenkins v. County of Riverside, 398 F.3d 1093, 1095 n.4 (9th Cir. 2005); Shakur v. Schriro,

12

514 F.3d 878, 892 (9th Cir. 2008).

13

E.

14
15

PETRONAS HAS ABANDONED ITS UNFAIR COMPETITION CLAIM

PETRONAS’S TRADEMARK REGISTRATION SHOULD BE
CANCELLED

Despite defending the entirety of trademark Registration No. 2,969,707 for nearly two

16

years, Petronas has finally admitted to abandonment of most of the goods listed therein. In a filing

17

two weeks ago with the U.S. Patent and Trademark Office (“PTO”), Petronas voluntarily deleted

18

the majority of listed goods. OPPAPP3025-56. However, the remainder of the Registration has

19

been abandoned as well and there are ample grounds for the Court to cancel it in its entirety. 7

20

Petronas does not dispute that three consecutive years of non-use of a trademark creates a

21

prima facie case, or rebuttable presumption, of abandonment. 15 U.S.C. § 1127; Abdul-Jabbar v.

22
23
24
25
26
27
28

7

Petronas tries to distract from the merits of Go Daddy’s counterclaim by rehashing already
failed arguments challenging Go Daddy’s standing. Pl. Opp. to Mot. for Leave to Amend at 2-4.
Dkt # 100. As Go Daddy already explained in its earlier reply in support of its motion for leave to
amend at 2-6. Dkt # 103. Petronas is using the registration as a sword against Go Daddy in a
federal lawsuit; this is sufficient to confer standing. See World Market Center Venture, LLC v.
Texas Int’l Prop. Assocs., No. 208-CV-01753-RCJ-GWF, 2009 WL 3303758, at *3 (D. Nev. Oct.
14, 2009) (“being sued for infringement . . . is sufficient to support standing for a counterclaim for
cancellation.”); Roxbury Entm’t v. Penthouse Media Group, Inc., No. 08 CV 3872 FMC (JWJX),
2009 WL 2950324, at *3 (C.D. Cal. Apr. 3, 2009). See additional discussion and cases cited in Go
Daddy’s July 7, 2011 Reply, Dkt #101. After consideration of these very arguments and
authorities, this Court rejected Petronas’s position on standing. See Order, Dkt # 105.
REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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Gen. Motors Corp., 85 F. 3d 407, 411 (9th Cir. 1996); Unuson Corp. v. Built Entm’t Group, Inc.,

2

No. C 05-0305 MHP, 2006 WL 194052, at *4 (N.D. Cal. Jan. 23, 2006). Indeed, Petronas admits

3

that the “presumption places a burden of production on the party contesting abandonment,” Opp. at

4

22. The onus is – as it must be – on Petronas to produce evidence that the specific design mark in

5

the Registration is in use in U.S. commerce. From there, Go Daddy and the Court can only assume

6

that this is the best evidence of use that Petronas can provide, and must make inferences about use

7

or non-use of the mark. See Auburn Farms Inc. v. McKee Food Corp., No. 22060, 1999 WL

8

588247, at *7 (T.T.A.B. 1998) (finding abandonment through nonuse from a scant record because

9

“[e]specially when a party must prove a negative, as in proving abandonment through nonuse,

10

without resort of proper inferences the burdened party could be faced with an insurmountable

11

task.”) (quoting Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 1024

12

(Fed. Cir. 1989). For a registrant using a mark in the U.S., it is not difficult to meet the standard;

13

all Petronas had to produce were labels or photographs showing the design mark in the

14

Registration affixed to the goods or their packaging, along with evidence that such labeling was

15

used continuously (without a three-year gap) since the registration date. Petronas has not done so.

16

Petronas points to over a hundred pages of documents without explanation. Opp. at 24.

17

The great majority of these documents (OPPAPP 377-384) are copies of bills of lading, which do

18

not show any trademark use for any mark and do not even display the oil drop design in the

19

Registration. The remaining pages are invoices, all of which fail to meet Petronas’s burden to

20

show use of the mark for numerous reasons:

21

Affixation. Invoices generally do not satisfy the affixation requirement. See MSJ, at 23-

22

24. Contrary to Petronas’s protestations that affixation is “impracticable” for similarly situated

23

petroleum goods, other trademark owners in Petronas’s position, such as Chevron, have been able

24

to submit labels – a classically acceptable specimen for goods – showing use of the mark to the

25

PTO. See, e.g., Fiorino, Exs. 5, 6.

26

Trade Name Use. The few invoices not showing the different Petronas “Netherlands”

27

trademark show shipment to one person (Richard Erikson) under the ALTCO mark; the

28

PETRONAS and Design mark only appears in small very print in the letterhead within the text
REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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1

“A Subsidiary Company of Petronas.” OPPAPP3040-55. This is trade name use, not the brand-

2

like trademark use necessary to support a U.S. trademark registration. See In re Supply Guys,

3

Inc., 86 USPQ 2d 1488, 1491 (TTAB 2008) (specimen showing mark in the ‘Ship From’ section

4

of mailing label constitutes trade name use only, not trademark use). In addition, the latest of

5

this small set of invoices is from January 11, 2008, nearly four years ago.

6

Mark Differs from the Mark in the Registration. The mark shown in a trademark specimen

7

must match the mark in the registration. Trademark Manual of Examining Procedure § 1604.13.

8

Even if the invoices were acceptable in this instance – which they are not – the few invoices

9

Petronas refers to (OPPAPP364-76) do not show use of the specific mark in the registration;

10

instead of showing the mark “PETRONAS” with a design, as required, the invoices show the term

11

“PETRONAS MARKETING (NETHERLANDS) B.V.” with a design. The addition of these

12

terms is not “mere styling” or “modernization,” but rather is a substantial change to the

13

commercial impression of the mark, and such specimens cannot be accepted.8 Id.

14

III.

CONCLUSION

15

For the foregoing reasons, Go Daddy respectfully requests that the court grant its Motion

16

for Summary Judgment.

17

Dated: November 23, 2011

18
19
20
21
22
23
24
25
26
27
28

WILSON SONSINI GOODRICH & ROSATI
By: /s/ John L. Slafsky
JOHN L. SLAFSKY
DAVID L. LANSKY
HOLLIS BETH HIRE
Attorneys for Defendant GODADDY.COM, INC.

8

Petronas misleadingly claims that the documents referenced here have been accepted by the
PTO “to support use in commerce of the word-mark Petronas in Registration No. 2,932,662.”
Opp. at 24 (emphasis added). This is false. First, Registration No. 2,932,662 is for the oil drop
design alone, and does not include the Petronas word mark (or any word mark). OPPAPP3059.
Second, some of the documents submitted as specimens with that registration do include a stamp
with the design mark alone, so they may support that particular design mark registration but not the
PETRONAS and Design registration at issue here. See, e.g., OPPAPP3069-71. Third, the PTO
does not investigate abandonment of the mark in the U.S. unless a third party challenges the
registration; so the PTO could have accepted one document showing use of the mark despite years
of nonuse that, if examined, would reveal that the oil drop design has been abandoned as well.
It is notable that Petronas could have filed the same Affidavit of Use at the same time for
the registration at issue in this case, but instead waited until two weeks ago, after the period to
submit such a declaration had already expired, to make such filing. The only explanation for this
timing is that Petronas was hoping to avoid a negative PTO ruling on its affidavit before a decision
on summary judgment in this case.
REPLY ISO GO DADDY’S
MOTION FOR SUMMARY JUDGMENT
Case No. 4:09-cv-05939-PJH

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