Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 140

Declaration of Joseph G. Fiorino in Support of 112 Go Daddy's Motion for Summary Judgment filed by GoDaddy.com, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6)(Slafsky, John) (Filed on 11/23/2011) Modified on 11/28/2011 (vlk, COURT STAFF).

EXHIBIT 4

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
PETROLIAM NASIONAL BERHAD,

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Plaintiff,
vs.
GODADDY.COM, INC.,
Defendant.
GODADDY.COM, INC.,
Counterclaimant,
vs.
PETROLIAM NASIONAL BERHAD,
Counterclaim Defendant.

CASE NO.: 09-CV-5939 PJH

REBUTTAL EXPERT REPORT OF MICHAEL PALAGE
1. I have been retained by GoDaddy.com, Inc. (“Go Daddy”) to provide expert testimony
in this matter, including rebuttal of Plaintiff’s expert witnesses Tina Dam and Kevin
Fitzpatrick. My qualifications in connection with this subject matter have been set forth
in my Expert Report dated 3-October-2011.

I.

BASIS FOR TESTIMONY

2. I have carefully read each of the expert statements of both Tina Dam and Kevin
Fitzpatrick and have reviewed the other 1400 pages in attachments accompanying each
statement. In formulating the opinions contained in this rebuttal report, I have also
reviewed the following documents which each have been included as an exhibit to this
report:
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DailyChanges.com website

•

Hover.com website

•

Domainsatcost.ca website

•

Rebel.com website

•

Ascio website

•

Speednames.com website

II.

SUMMARY OF REPORT AND CONCULSIONS

3. Plaintiff’s experts have provided a narrow interpretation of basic registrar services in the
current domain name marketplace. Their interpretation is not supported by any factual
data and is inconsistent with my understanding of basic registrar services.
4. All of the factual data available, including the specific history of the domain registrar
marketplace, legislative history of the Anti-Cybersquatting Consumer Protection Act
(ACPA), ACPA case law, technical documentation, and other legal documents make
clear that registrars provide a much broader scope of basic services in connection with
domain name registrations.
5. There is nothing in Plaintiff’s expert reports that suggests Go Daddy has ever acted in
bad faith in connection with its provision of domain name registration services for the
domain names underlying this lawsuit, PETRONASTOWER.NET and
PERTRONASTOWERS.NET.

III.

COMMON THEME OF PLAINITIFF’S EXPERT REPORTS

6. The common theme of the over 2800 pages of documents comprising the Plaintiff’s
expert reports can be distilled down to the following three points:
•

Registrars play no role in domain name resolution services;

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Registrars’ only role in providing domain name registration services is to submit
and maintain a limited set of data to a registry on behalf of a registrar; and

•

Domain name forwarding is separate and distinct from domain name registration.

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REBUTTAL TO TINA DAM’S OPINIONS
7. Plaintiff’s expert Tina Dam has stated that it is her expert opinion that:
•

“the domain name registrars (in their domain name registration services) do not
play a direct or active role in the process of domain name resolution.”;

•

“Their only function related to domain name registration is to submit, update,
and otherwise maintain requests to the domain name registry for registration
including the name servers that are authoritative for the registered domain
name.”;

•

“The forwarding or redirection services is an added service typically provided
by registrars to its customers. In [her] opinion, such service is separate to that of
domain name registration.”

Based on my experience in the domain name field and my review of considerable
empirical data, I disagree with these opinions.

A. REGISTRARS PLAY A ROLE IN DOMAIN NAME RESOLUTION
8. The first opinion of Ms. Dam is that registrars do not play a direct or active role in
domain name resolution. However, she provides no factual foundation for her opinion.
9. Listed below is data obtained from the website DailyChanges.com, a recognized source
within the domain name industry for statistics regarding daily changes to the most
popular authoritative name servers in the .com, .net, .org, .info, .biz, generic top-level
domains (gTLDs) registries, which account for over 95% of the entire gTLD global
market share. See Exhibit #1.
Domain Names
Name Server

Associated with

ICANN -

ICANN-

these Names

Accredited

Accredited

Servers

Rank

Associated with

Registrar

Registrar

1

DOMAINCONTROL.COM

31,474,914

Yes

Go Daddy

2

NAME-SERVICES.COM

3,486,023

Yes

eNom

3

WORLDNIC.COM

3,062,681

Yes

Network

3

Solutions
4

1AND1.COM

2,883,019

Yes

1&1

5

SEDOPARKING.COM

1,931,642

Yes

Sedo

6

HOSTGATOR.COM

1,842,795

Unknown

N/A

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YAHOO.COM

1,805,652

No

N/A

8

DSREDIRECTION.COM

1,513,735

Yes

NameKing

9

BLUEHOST.COM

1,494,000

Yes

FastDomain

10

REGISTER.COM

1,415,147

Yes

Register.com

Source DailyChanges (http://www.dailychanges.com/) Date: 4-October-2011
10. These domain name servers are the authoritative name servers which both of Plaintiff’s
experts acknowledge are essential for domain name resolution. These authoritative name
servers contain the information that help Internet users resolve webpages as well as send
and receive email in connection with specific domain names.
11. The table above illustrates that 80% of the top-ten name servers providing resolution for
gTLD registries are directly associated with an ICANN-accredited registrar, while the
other 20% provide are run by companies providing domain name registrations services
through an ICANN-accredited registrar. These numbers on their face contradict the
statement of Plaintiff’s expert Ms. Dam that registrars have no director active role in
domain name resolution.
12. In the table above the second level domain name DOMAINCONTROL.COM is operated
by Go Daddy. Go Daddy uses this name server to provide resolution services in
connection with over 30 million domain names. In fact the primary and secondary
domain name servers for the domain names PETRONASTOWER.NET and
PETRONASTOWERS.NET, the two domain names underlying this lawsuit, are
NS39.DOMAINCONTROL.COM and NS40.DOMAINCONTROL.COM.

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Source: http://www.verisigninc.com/en_US/products-and-services/domain-nameservices/whois/index.xhtml

13. It is no coincidence that the top-ten registrars, such as Go Daddy (#1), eNom (#2),
Network Solutions (#4), 1&1(#5), and Register.com (#10), as originally identified in my
3-October-2011 Export Report, also appear in this top-ten list of most popular name
servers in the table above, e.g. Go Daddy (#1), eNom (#2), Network Solutions (#3), 1&1
(#4) and Register.com (#10).1
14. Also included in this table of most active domain name servers are ICANN-accredited
registrars Sedo (#5), NameKing(#8), and FastDomain (#9),
15. It is therefore difficult to reconcile the opinion of Ms. Dam that registrars “do not play a
direct or active role in the process of domain name resolution,” on the one hand, with
these objective facts, on the other. These facts demonstrate clearly and unequivocally that
registrars play a direct and active role in providing domain name resolution services.

B. REGISTRARS PROVIDE A WIDE RANGE OF REGISTRATION SERVICES

16. The second opinion of Ms. Dam is that a registrar’s “only function related to domain
name registration is to submit, update, and otherwise maintain requests to the domain

1

In my 3-October-2011 Expert Report, Schlund + Partners was identified by Webhosting.info as the fourth largest
gTLD registrar according to marketshare. There was a merger between Schlund + Partners and 1&1, and 1 & 1 is
now identified by ICANN as the legal entity holding the accreditation, see
http://www.icann.org/en/registrars/accredited-list.html

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name registry for registration including the name servers that are authoritative for the
registered domain name.”
17. While Ms. Dam’s opinion of registrar services would have been an accurate description
of registrar services in 1997, prior to the creation of ICANN and the current competitive
domain name marketplace, her description of services is inconsistent with the breadth and
scope of services that registrars have provided since that time.
18. As established in my 3-October-2011 Expert Report, each of the top-ten gTLD registrars
today provides an expansive range of basic domain name services, including but not
limited to resolution and domain name forwarding (see below for more detailed
discussion).
19. Further evidence of the increased scope of domain name registrar services since 1997 is
contained in the very ICANN Registrar Accreditation Agreement cited as an exhibit to
Ms. Dam’s report. Specifically, the Appendix to the .NAME gTLD registry agreement,
which must be executed by any ICANN-accredited registrar wishing to provide services
for .NAME registration, includes the following text:
Data Submission. Pursuant to Subsection 3.2.1, as part of its registration for SLD
E-mail forwarding, the NameWatch Service, and Defensive Registrations,
Registrar shall submit to, or shall place in the Registry Database operated by, the
Registry Operator for the TLD that Registry Operator, consistent with Appendix
C to its Registry Agreement with ICANN, data elements Registry Operator
requires be submitted to it.
(Dam Expert Report, Page 686)
This agreement on its face contradicts the narrow interpretation of services that Ms. Dam
claims a registrar provides to registrants. The agreement cites services such as
NameWatch services and E-mail forwarding, which are well beyond the scope of
Plaintiff’s narrow interpretation.
20. While this is just one example of a diverse range of basic services which ICANNaccredited registrars can provide through a gTLD registry, the domain name marketplace
is evolving and many such other services are now routinely offered. I expect the scope of
basic services offered by registrars will continue to expand. Ms. Dam in her capacity as
Chief Operation Officer (COO) of .MUSIC and Co-Founder of MyTLD should more
fully appreciate the potential future innovation that ICANN’s current new gTLD process
will bring to the current registrar marketplace.
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21. The continued innovation which ICANN has heralded as part of its new gTLD program
will further distance the current registrar market place from the one that existed in 1997.
22. Evidence of this evolution within the domain name marketplace and the innovative
services that registrars and registries provide were foreshadowed by the very engineers
that developed the protocols and standards upon which the domain name system (DNS)
was created.
23. For example, Ms. Dam’s expert report includes a stack of Request for Comments (RFCs)
which provide the foundation to the technical standards which make the Internet the
stable and interoperable network that it is today.2 Numerous excerpts from these various
technical documents contain clear and direct evidence of a much broader scope of basic
services that could be provided or bundled into the DNS.
24. In RFC 5750 regarding the Extensible Provisioning Protocol (EPP), which is the protocol
by which ICANN-accredited registrars and registries exchange data, it states in relevant
part that:
The original motivation for this protocol was to provide a standard Internet
domain name registration protocol for use between domain name registrars and
domain name registries. This protocol provides a means of interaction between a
registrar's applications and registry applications. It is expected that this protocol
will have additional uses beyond domain name registration. (Emphasis added)
(Dam Expert Report Page 740)
As set forth above, the engineer that created EPP, the protocol which registrars and
registries use to exchange domain name registration data, recognized that it has additional
uses beyond just domain name registrations. For example, it is through EPP that ICANNaccredited registrars can provide the bundled .NAME services listed above, e.g. E-mail
forwarding.
25. RFC 5731 regarding EPP Domain Name Mapping states the following:
While the DNS allows many resource record types to be associated with a
domain, this mapping only explicitly specifies elements that describe resource
records used for domain delegation and resolution. Facilities to provision other

2

RFCs are published by the Internet Engineering Task Force (IETF) and describing methods, protocols, research, or
innovations applicable to the secure stable operation of the Internet and Internet-connected systems. A list of all
RFCs are maintained by the IETF at http://www.ietf.org/rfc.html

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domain-related resource record types can be developed by extending this
mapping. (Emphasis added)
(Dam Expert Report Page 807)
26. This RFC also acknowledges the future addition of other resource records into
authoritative name servers. Other resource records could be used in potential new and
innovative ways, such as the Name Authority Pointer (NAPTR) records used by TelNic
in connection with the .TEL registry. The NAPTR records contain contact information
such as a URL and an Enumservice that indicate the type of URL information, such as
email or phone service.3
27. In RFC 3375 regarding Generic Registry-Registrar Protocol Requirements (the
predecessor to EPP) this document states:
7.5 Extensibility
[1] Extensibility is a measure of the extent to which a protocol can be adapted
for future uses that were not readily evident when the protocol was originally
designed. The protocol SHOULD provide features that at a minimum allow for
the management of new object types without requiring revisions to the protocol
itself.
[2] The requirements described in this document are not intended to limit the
set of objects that might be managed by the protocol. The protocol MUST
include features that allow extension to object types that are not described in
this document.
[3] The protocol MUST provide an optional field within all commands whose
format and use will be controlled by individual registry policy.
(Emphasis added)
(Dam Expert Report Page 935)
This RFC in clear and unequivocal language acknowledges the future evolution of the
technology when it states that the protocol can be used for “future uses that were not
readily evident when the protocol was original designed.”
28. In RFC 1034 entitled Domain Names – Concepts and Facilities, written by Paul
Mockapetris, the Father of the DNS, it states in relevant part:
[T]he domain system is intentionally extensible. Researchers are continuously
proposing, implementing and experimenting with new data types, query types,

3

See http://dev.telnic.org/pages/record_types.html

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classes, functions, etc.
(Dam Expert Report Page 991)
29. RFC 1035 entitled Domain Names – Implementation and Specification states in relevant
part:
The domain system is a mixture of functions and data types which are an official
protocol and functions and data types which are still experimental. Since the
domain system is intentionally extensible, new data types and experimental
behavior should always be expected in parts of the system beyond the official
protocol.
(Dam Expert Report Page 1043)

30. These technical documents overlay, if not predict, the evolution of the domain name ecosystem that has occurred over the last fourteen years. In contrast, Plaintiff’s experts cling
to an overly narrow definition of registrars services which has not been seen since 1997,
and which will be further relegated to the history books with ICANN’s planned
expansion of the name space to create an unlimited number of new gTLDs.

C. DOMAIN NAME FORWARDING IS A UBIQUITOUS REGISTRAR SERVICE

31. The third opinion of Ms. Dam is that forwarding or redirection services are an added
service separate from that of domain name registration. As previous stated, it is difficult
to reconcile this statement with the factual evidenced produced in my Export Report
dated 3-October-2011. That factual evidence, including documentation of domain name
forwarding in each of the top-ten ICANN-accredited registrars, made clear, that this is a
ubiquitous service provided by the top-ten ICANN- accredited registrars. See Exhibits 2
thru 9. Additional research encompassing even a broader cross section of ICANNaccredited registrars reaffirms that this service is routinely offered within the registrar
marketplace generally.
32. To illustrate this point further, I have also reviewed the websites of registrars that Ms.
Dam previously worked for either directly or indirectly prior to her employment with
ICANN.

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33. Hover is a service of TUCOWS, the third largest registrar in the world, and an ICANNaccredited registrar for whom Ms. Dam previously consulted prior to her employment
with ICANN. Hover as part of its basic domain name registration service bundles domain
name forwarding for free. See Exhibit 9.
34. Ms. Dam also previously worked for Momentous, Inc., which owns a family of ICANNaccredited registrars including Domainsatcost.ca and Rebel.com. These registrars bundle
domain name forwarding for free with their basic domain name registration services. See
Exhibits 10 and 11.
35. Ms. Dam also worked for Ascio Technologies. Today Ascio Technologies, an ICANNaccredited registrar, provides as a service to its clients “a powerful management tool,
which gives full control over DNS configuration and related services through a web
interface” including the ability to “redirect web traffic from one domain to another.” See
Exhibit 12.
36. Ms. Dam also worked for Speednames, another ICANN-accredited registrar.
Speednames also bundles domain name forwarding, for free, with its basic domain name
registration services. See Exhibit 13.
37. It is hard to reconcile Ms. Dam’s statement that domain name forwarding is a separate
service, when the facts to point to it being a ubiquitous service that many registrars
bundle for free as part of a basic domain name registration.

IV.

REBUTTAL TO KEVIN FITZPATRICK’S OPINIONS

38. Given the substantial overlap of substantive material contained in the expert reports of
Ms. Dam and Mr. Fitzpatrick, most, if not all, of my statements above regarding Ms.
Dam’s opinions are equally applicable to Mr. Fitzpatrick’s opinion as well.
39. Kevin Fitzpatrick has stated that it is his expert opinion that:
•

“the process for domain name forwarding is completely separate from the
process of domain name registration and does not any action by a domain name
registrar”;

•

“domain name forwarding and routing cannot be considered part of domain
name registration services generally or the domain name registration services
offered by Go Daddy”;
10

•

“the process of domain name registration, in all relevant respects, involves
nothing more than the creation of a record linking a domain name to an

•

Authoritative Domain Name Server.”; and
“domain name forwarding service cannot be considered part of its function as a
registrar providing domain name registration (or maintenance).”

Based on my experience in the domain name field and my review of considerable
empirical data, I disagree with these opinions.
A. DOMAIN FORWARDING IS NOT A SEPARATE SERVICE PROVIDED BY
REGISTRARS
40. Plaintiff’s expert Mr. Fitzpatrick is of the opinion that domain name forwarding is a
separate service provided by registrars, but offers no proof to support this claim.
41. As established in my original 3-October-2011 expert report and supplemented by the
statements in Paragraphs 31 thru 37 above, domain name forwarding is a ubiquitous
service not only offered by the top-ten ICANN-accredited gTLD registrars, but by most
retail registrars I have researched, including the five registrars to which Plaintiff’s other
expert Ms. Dam has provided professional services.
B. DOMAIN FORWARDING AND ROUTING IS A BUNDLED SERVICE
PROVIDED BY REGISTRARS
42. Plaintiff’s expert Mr. Fitzpatrick is also of the opinion that domain name forwarding and
routing cannot be considered part of a domain name registration, but again offers no data
or proof from the domain name marketplace to support this claim.
43. As to this issue, the facts provided in my original 3-October-2011 expert report and
supplemented by the statements in Paragraphs 8 thru 30 in this report remain
unchallenged.

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C. DOMAIN NAME REGISTRATION INVOLVES MORE THAT LINKING A
DOMAIN NAME TO AN AUTHORITATIVE NAME SERVER
44. Plaintiff’s expert Mr. Fitzpatrick is of the opinion that the process of domain name
registration, in all relevant respects, involves nothing more than the creation of a record
linking a domain name to an Authoritative Domain Name Server.
45. As established in my original 3-October-2011 expert report and supplemented by the
statements in Paragraphs 8 thru 13 above, this opinion appears based on the narrow
interpretation of registrar services based on a 1997 marketplace, while ignoring the
objective facts from today’s registrar marketplace of services.
D. DOMAIN NAME FORWARDING IS A UBITIOUS REGISTRAR SERVICE
46. Mr. Fitzpatrick states his opinion, without any supporting documentation, that domain
name forwarding is not part of domain name registration or maintenance. As I stated in
Paragraphs 31 thru 37 above there is clear and unequivocal evidence to the contrary.

V.

CONCLUSION

47. Plaintiff’s experts have provided a narrow interpretation of basic registrar services in the
current domain name marketplace, which is not supported by any factual data, and which
is inconsistent on my understanding of basic registrar services.
48. All of the factual data available, including the specific history of the domain registrar
marketplace, legislative history of the ACPA, ACPA case law, technical documentation,
and other legal documents make clear that registrars provide a much broader scope of
services in connection with domain name registrations.

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49. Adopting the overly narrow definition of registrar services proposed by Plaintiff’s experts
could potentially undermine over a decade of well-established case law.
50. Finally, Plaintiff’s expert reports remain void of any facts demonstrating Go Daddy has
ever acted in bad faith in connection with its provision of domain name registration
services for the domain names underlying this lawsuit, PETRONASTOWER.NET and
PERTRONASTOWERS.NET.

By:
Name: Michael D. Palage
Date: 2 November 2011

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