Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 141

REPLY (re 134 MOTION for Partial Summary Judgment re Liability for Contributory Cybersquatting as to PETRONASTOWERS.NET ) filed byPetroliam Nasional Berhad. (Clark, Perry) (Filed on 11/23/2011)

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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 (MEJ)
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) Noticed Hearing Date: December 7, 2011
) Noticed Hearing Time: 9:00 a.m.
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PLAINTIFF PETRONAS’S
REPLY IN SUPPORT OF ITS MOTION FOR
PARTIAL SUMMARY JUDGMENT ON GODADDY’S LIABILITY FOR
CONTRIBUTORY CYBERSQUATTING

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TABLE OF CONTENTS

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I.
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THE UNDISPUTED FACTS ESTABLISH THAT GODADDY IS NOT
IMMUNE FROM LIABILITY FOR CONTRIBUTORY
CYBERSQUATTING AS A MATTER OF LAW ......................................................... 2

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A.

The Undisputed Facts Establish That GoDaddy Was Not Acting As A
Registrar Providing The Registration And Maintenance Of A Domain
Name....................................................................................................................... 2

B.
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GoDaddy Is Not Immune As A Matter Of Law For Its Conduct As
Established By The Undisputed Facts ................................................................ 6

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1.

The ACPA’s Immunity For Registrar’s Is Limited To The
Registration And Maintenance Of A Domain Name ............................. 6

2.

There Is No Case Law That Expands The ACPA Registrar
Immunity To GoDaddy’s Conduct With Respect To
Petronastowers.net .................................................................................... 9

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II.

THE UNDISPUTED EVIDENCE SUPPORTS ALL OF THE ELEMENTS
OF CONTRIBUTORY CYBERSQUATTING ............................................................ 11

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A.

The Undisputed Facts Establish The Registrant’s Direct
Cybersquatting As A Matter Of Law................................................................ 11

B.

GoDaddy Had Direct Control And Monitoring Of The
Instrumentality The Registrant Used to Commit Cybersquatting................. 12

C.

The Undisputed Facts Establish, At Least, GoDaddy’s Willful
Blindness To The Registrant’s Cybersquatting ............................................... 14

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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, 320-321 (S.D.N.Y. 2010)........................ 9

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Carmen v. S.F. Unified School Dist., 237 F.3d 1036, 1028 (9th Cir. 2001) ................................... 4

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In re Stratosphere Corp. Secur. Litig., 182 F.R.D. 614, 618-619 (D. Nev. 1998) ......................... 7

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Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648 (N.D. Tex. 2001) ......... 9

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Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., - - F.3d - -, 2011 WL4014320 (9th Cir. 2011)

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................................................................................................................................................... 13

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Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1105 (C.D. Cal. 2009) ....................... 9

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Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 109 (2nd Cir. 2010) ............................................... 16

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STATUTES
15 U.S.C. § 1114(2)(D)(iii)............................................................................................................. 7
RULES

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Fed. R. Civ. P. 26(g)(3)................................................................................................................... 5
Fed. R. Civ. P. 37(c) ....................................................................................................................... 5
Fed. R. Civ. P. 56(e) ....................................................................................................................... 3
TREATISES
Shwarzer, et al., Federal Civil Procedure Before Trial at 11:1330................................................. 5

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INTRODUCTION

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Even if the Court were to disregard all of the facts that GoDaddy disputes, Petronas’s
motion for partial summary judgment should be granted in light of the remaining, undisputed
facts.
With respect to “registrar immunity,” GoDaddy does not contend that its domain name
forwarding service constitutes the “maintenance” of a domain name. And GoDaddy does not
dispute the facts establishing that an ICANN-accredited registrar can perform “the registration or
maintenance of a domain name” without providing domain name forwarding. Instead, GoDaddy
concedes that “the act of initially registering, or obtaining, a domain is different from forwarding
(or otherwise resolving) a domain.” Opp. at 11:25-27 (emphasis original). Nonetheless,
GoDaddy argues that “registrar immunity” applies to its domain name forwarding service
because it is “routing” or a “basic registrar service.” But the “registrar immunity” of the ACPA
and the case law is limited to, as Congress stated in the ACPA’s legislative history, “the act of
registration of a domain name” and there is no legal authority to support GoDaddy’s expansive
interpretation to the contrary.
GoDaddy also does not dispute the facts establishing its liability for contributory
cybersquatting and contends instead that Petronas is not entitled to judgment as a matter of law.
But in so doing, GoDaddy simply ignores undisputed facts establishing its liability. Thus, with
respect to the Registrant’s “bad faith intent,” GoDaddy fails to address the undisputed facts
establishing three of the six ACPA “bad faith” factors. Likewise, for both the “direct monitoring
and control” and “knowledge” elements, GoDaddy opts to “cherry pick” facts and ignore others
to argue that the evidence is legally insufficient to support liability. And on the issue of “willful
blindness,” GoDaddy fails to address the facts cited in Petronas’s motion establishing the
grounds for GoDaddy to at least suspect the Registrant’s cybersquatting.
As a result, Petronas’s motion for partial summary judgment as to GoDaddy’s liability for
contributory cybersquatting should be granted.

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THE UNDISPUTED FACTS ESTABLISH THAT GODADDY IS NOT IMMUNE
FROM LIABILITY FOR CONTRIBUTORY CYBERSQUATTING AS A
MATTER OF LAW

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GoDaddy now concedes—as it must—that “the act of initially registering, or obtaining, a

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I.

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domain is different from forwarding (or otherwise resolving) a domain.” Opp. at 11:25-27

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(emphasis original). Indeed, all of the undisputed facts are consistent with the Fed. R. Civ. P.

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30(b)(6) testimony of GoDaddy’s vice-president and Corporate Controller, Ron Hertz, that “I

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don’t believe the domain name forwarding service relates at all to the registration of the domain

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name.”

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GoDaddy’s new argument—that “the ACPA immunity applies to all conduct engaged in

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by a registrar functioning as a registrar”—contradicts the plain language of the ACPA and the

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case law. Opp. at 11:4-5 (emphasis added). And it cannot be reconciled with Congress’s intent

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that the ACPA “encourage domain name registrars and registries to work with trademark owners

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to prevent cybersquatting.” 1999WL59471 *11.

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A.

The Undisputed Facts Establish That GoDaddy Was Not Acting As A
Registrar Providing The Registration And Maintenance Of A Domain Name

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GoDaddy fails to address the evidence cited in Petronas’s Opening Brief establishing that

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an ICANN-accredited registrar can perform all of the functions required for the “registration and

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maintenance” of a domain without providing domain name forwarding and, pursuant to Fed. R.

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Civ. P. 56(e), they should be considered undisputed. Opening Brief at 3:16-4:1 and 4:5-9.

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In addition, GoDaddy fails to show that there is a genuine dispute as to the fact that it

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provides its hosting customers with domain name forwarding for domains not registered by

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GoDaddy. Opening Br. at 4:10-24. First, GoDaddy fails to address Petronas’s assertion of fact

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that GoDaddy provides its hosting service to customers for use with domain names for which

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GoDaddy is not the registrar. Opening Br. at 4:22-24. As such, that fact should be considered

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undisputed pursuant to Fed. R. Civ. P. 56(e).

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Second, GoDaddy fails to show that there is a genuine dispute as to the fact that it
provides domain name forwarding to its hosting customers for domain names not registered by
GoDaddy in light of the following evidence:
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On its website, GoDaddy describes its domain name forwarding service for its

hosting customers as allowing them to “automatically send your website’s visitors to your
chosen destination, either a different location within that same site or a new site entirely.”
AP046.
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“GoDaddy hosting customers can have traffic routed to GoDaddy-hosted websites

from domains registered elsewhere (not with GoDaddy) (‘external domains’) [and s]uch
routing is the same as ‘routing/forwarding’ as referenced in GoDaddy’s supplemental
initial disclosures.” APP016 (GoDaddy’s Response to Interrogatory No. 25). The
“routing/forwarding” to which GoDaddy referred in its supplemental initial disclosures is
the “routing/forwarding of the disputed domain names” “provided by GoDaddy related to
the disputed domain names.”
GoDaddy cites to two pieces of “evidence” in support of its contention that “the evidence
establishes unequivocally that GoDaddy’s forwarding service is only available for domains
registered with GoDaddy”—neither of which create a genuine dispute. Opp. at 4:18-20. The
first is “Munson Decl. ¶ 10,” which does not exist—the Munson declaration only has nine
paragraphs. See Munson Decl. The second is deposition testimony from GoDaddy’s employee
John Roling who, when asked “were you aware that GoDaddy offered URL redirecting with
hosting accounts?” responded, “[a]s I said I’m not familiar with the hosting account, so –.”
Lansky Decl. Ex. 1 at 48:4-7. Given Mr. Roling’s lack of knowledge, the deposition testimony
that GoDaddy cites is inadmissible because it lacks foundation and is insufficient to create a
genuine dispute as to the facts established by GoDaddy’s verified interrogatory response, initial
disclosures, and APP046. Carmen v. S.F. Unified School Dist., 237 F.3d 1036, 1028 (9th Cir.
2001) (Federal Rule of Evidence 602 prevents a witness from testifying on a matter “unless

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evidence is introduced sufficient to support a finding that the witness has personal knowledge of
the matter.”).
With respect to the description on GoDaddy’s website of its domain name forwarding
service for use by its hosting customers (APP046), GoDaddy points to the declaration of Scott
Brown to argue that there is a genuine dispute of fact. The Brown declaration, however, should
be stricken and should not be considered. Mr. Brown was not identified in GoDaddy’s initial
disclosures or in any other documents served or produced by GoDaddy prior to the filing of its
opposition brief on November 18, 2011, well after the close of fact discovery on October 19,
2011. Clark Decl. Ex. B. GoDaddy knew at least as early as June 30, 2011 that whether
GoDaddy provided its domain name forwarding service for domains not registered with
GoDaddy was an issue in this case because its Amended Answer and Counterclaim contained the
following “Sixth Affirmative Defense”:
The Complaint is barred, in whole or in part, by the defense of misrepresentation
of material facts. The Complaint contains numerous factually incorrect
allegations, including inter alia, that “GoDaddy provides its ‘domain name
forwarding’ service to registrants who registered their domain names with
registrars other than GoDaddy.” Complaint ¶ 30.
Amended Answer and Counterclaim ¶ 107.
Under Fed. R. Civ. P. 37(c), “[i]f a party fails to provide information or identify a witness

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as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to

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supply evidence on a motion, at a hearing, or at trial, unless the failure was substantially justified

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or harmless.” Fed. R. Civ. P. 26(g)(3); see also Shwarzer, et al., Federal Civil Procedure Before

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Trial at 11:1330 (“A party’s or attorney’s signature on a disclosure document constitutes

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certification that it is complete and correct to the best of the signer’s knowledge and belief,

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formed after a reasonable inquiry. . . [i]f that certification is violated, the court must (on a motion

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or sua sponte) impose an appropriate sanction on the signer unless substantial justification for the

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failure is shown.” (emphasis original)). Accordingly, the Brown declaration should be stricken

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and not considered.

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As for GoDaddy’s verified response to Interrogatory No. 25 (APP016), GoDaddy’s
attorneys argue that a sentence in that response—“GoDaddy does not provide any services for
the external domains themselves”—means that the “routing/forwarding” it refers to is provided
“by the registrar of such domains, not by GoDaddy.” Opp. 4:28-5:1. But the fact that
“GoDaddy does not provide services for the external domains” establishes only that GoDaddy is
providing the forwarding service to it hosting customers and not to the registrants of the
“external domains.” It does not contradict the meaning of the rest of the interrogatory response
that the “routing” GoDaddy provides for domains not registered with GoDaddy is “the same as”
“the routing/forwarding service GoDaddy provided for the disputed domains.”

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Even if the language of its response to Interrogatory No. 25 was ambiguous, GoDaddy
should be precluded from arguing for an alternative interpretation because its attorneys
improperly instructed the GoDaddy employee who verified that response not to answer any
deposition questions about GoDaddy’s interrogatory responses, including Go Daddy’s Response
to Plaintiff’s Third Set of Interrogatories which contains GoDaddy’s response to Interrogatory
No. 25:

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Q. Let me now hand the witness what’s been marked as Exhibit 45. And do you
recognize Exhibit as Go Daddy’s Response to Plaintiff’s Third Set of
Interrogatories?

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MS. KLAUSNER: And I'm going to make the same objection and instruct the
witness not to answer, and I'm going to do it for all of these documents unless you
can explain how they pertain to the topic for which the witness has been
designated.
Q. I’m now handing the witness what’s been marked as Exhibit 46. And do you
recognize Exhibit 46 as the verification of Go Daddy’s Response to Plaintiff’s
Third Set of Interrogatories signed by you and dated October 14, 2011?
MS. KLAUSNER: I object again on the same grounds. It’s outside the scope of
the topics for which this witness has been designated. She's not here as a personal
witness. Instructing her not to answer.
Clark Reply Decl. Ex. A at 10:23-12:25.
These instructions not to answer were improper. Fed. R. Civ. P. 30(b)(6) (“A person may
instruct a deponent not to answer only when necessary to preserve a privilege, to enforce a court

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order, or to present a motion under Rule 30(d)(3).”). “Except as stated, it is generally improper
to instruct a deponent (counsel’s own client or anyone else) not to answer a question, and doing
so may warrant sanctions.” Shwarzer, et al., Federal Civil Procedure Before Trial at 11:1570
(citing cases). “If irrelevant questions are asked, the proper procedure is to answer the questions,
noting them for resolution at pretrial or trial.” Id. citing In re Stratosphere Corp. Secur. Litig.,
182 F.R.D. 614, 618-619 (D. Nev. 1998) (party may object to irrelevant line of questions, but
instructing witness not to answer is sanctionable.).
If, as GoDaddy now contends, its response to Interrogatory No. 25 should not be
understood to mean that GoDaddy provides its domain name forwarding service to hosting
customers for domains registered elsewhere, Petronas should have been permitted to examine the
GoDaddy employee who verified the interrogatory response. Because GoDaddy improperly
prevented Petronas from doing so, however, it should be precluded from arguing that there is a
genuine dispute as to whether GoDaddy provides its domain name forwarding service for
domain names that are not registered with GoDaddy.

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B.

GoDaddy Is Not Immune As A Matter Of Law For Its Conduct As
Established By The Undisputed Facts

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Regardless of whether the Court determines that there is a genuine dispute regarding

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whether GoDaddy provides its domain name forwarding service for domains with other

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registrars, GoDaddy is not immune from liability for contributory cybersquatting under either

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ACPA or the case law in light of the undisputed facts.

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1.

The ACPA’s Immunity For Registrar’s Is Limited To The
Registration And Maintenance Of A Domain Name

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The section of the ACPA on which GoDaddy relies, 15 U.S.C. § 1114(2)(D)(iii), states in

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relevant part that “[a] domain name registrar . . . shall not be liable for damages under this

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section for the registration or maintenance of a domain name for another.” This section says

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nothing about “forwarding,” “routing,” or “basic registrar services.” And it does not say, as

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GoDaddy contends, that “the ACPA immunity applies to all conduct engaged in by a registrar
functioning as a registrar.” Opp. at 11:4-5.

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Such blanket immunity would not only be contrary to the plain language of the ACPA
but also to the intent of Congress. The legislative history of the ACPA establishes that Congress
intended to limit—rather than eliminate—secondary liability for registrars by “codifying current
case law limiting the secondary liability of domain name registrars and registries for the act of
registration of a domain name.” 1999WL594571 *11. Had Congress intended to create
immunity for “all conduct engaged in by a registrar functioning as registrar” or eliminate liability
for contributory cybersquatting altogether, it would not have limited “secondary liability” to only
“the act of registration of a domain name.”

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Moreover, if Congress had intended to provide blanket immunity for registrars, it would
not have amended the ACPA to include a second limitation on registrar liability “for domain
name registrars and registries that suspend, cancel, or transfer domain names pursuant to a court
order or in the implementation of a reasonable policy prohibiting the registration of infringing
domain names.” 1999WL594571 *11. And this second amendment shows that Congress
intended the phrase “registration and maintenance” to be construed literally and narrowly—not
even to include the conduct of a registrar in suspending, cancelling, or transferring of a domain
name.
Fundamentally, GoDaddy’s contention that Congress intended to confer immunity on
registrars for conduct like GoDaddy’s in this case cannot be reconciled with Congress’s intent to
“encourage domain name registrars and registries to work with trademark owners to prevent
cybersquatting.” If, as GoDaddy contends, the ACPA provides immunity for its decision to
ignore the evidence of the Registrant’s cybersquatting as to PETRONASTOWERS.NET, then
there is nothing in the ACPA to “encourage domain name registrars to work with trademark
owners to prevent cybersquatting.” Had Congress intended the ACPA to allow a registrar to do
nothing, it would not have included the limitation on a registrar’s liability for the suspension,
cancellation, or transfer of a domain name “pursuant to a reasonable policy prohibiting the

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registration of infringing domain names” or limited a registrar’s secondary liability to only the
“registration and maintenance of a domain name.”
GoDaddy’s assertion that “the ACPA immunity applies to all conduct engaged in by a
registrar functioning as a registrar” is also not support by the cases in its brief. Opp. at 11:4-5.
First, GoDaddy cites to Baidu, Inc. v. Register.com, Inc., 760 F. Supp. 2d 312, 320-321
(S.D.N.Y. 2010), which it claims “recognize[d] immunity applies not only to registration but also
to conduct amounting to subsequent maintenance of [a] domain name.” Opp. at 115-7. The
Baidu case, however, actually says that “the first prong of the motion fails, as the statutory
immunity for domain registrars is inapplicable.” Id. Specifically, the Court in Baidu found that
the defendant, Register.com, “was not registering or maintaining a domain name . . . [i]t’s
purportedly wrongful actions occurred long after the registration of Baidu’s domain name.” Id.
The Court also addressed “maintenance,” finding “while Register’s actions arguably concerned
the maintenance of Baidu’s account with Register, they did not concern the maintenance of
Baidu’s domain name. . . Register’s challenged actions went well beyond those of a mere
registrar. The immunity defense is rejected.” Id.
GoDaddy also cites Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1105
(C.D. Cal. 2009) and Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648
(N.D. Tex. 2001) (“Lockheed II”), in support of its blanket ACPA immunity argument. But the
Court in Solid Host not only found that the plaintiff had stated a claim for contributory
cybersquatting but also that “a close examination of Lockheed II reveals that it merely stands for
the proposition that a registrar is not liable under § 1125(d) when it acts[as] a registrar, i.e.,
when it accepts registrations from customers.” Solid Host, NL, 652 F. Supp. 2d at 1104
(emphasis original).
The language of ACPA is plain and unambiguous and is supported by the legislative
history and the cases interpreting it: the “registrar immunity” only applies to the conduct of a
registrar providing the “registration and maintenance” of a domain name. It does not apply to
“routing” or “basic registrar services.” And it does not apply to GoDaddy’s refusal to stop

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providing its domain name forwarding service for PETRONASTOWERS.NET with full
knowledge that the Registrant was using that service to commit cybersquatting.

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There Is No Case Law That Expands The ACPA Registrar Immunity
To GoDaddy’s Conduct With Respect To Petronastowers.net

GoDaddy is wrong that “[t]he Ninth Circuit, in the Lockheed opinion that Congress
intended to codify when it enacted the ACPA, has already concluded that domain name routing
is a basic registrar service for which secondary liability will not lie.” Opp. at 2:20-21. As an
initial matter, the Ninth Circuit issued its Lockheed opinion in October 1999, after Congress
considered the ACPA in August 1999 and there is no reference to that decision anywhere in the
ACPA or its legislative history.
Moreover, the Ninth Circuit’s and District Court’s Lockheed decisions make clear that
GoDaddy’s conduct with respect to PETRONASTOWERS.NET is different from the conduct for
which Network Solutions was found not liable. The Ninth Circuit found that “[a]s the district
court correctly observed, [w]here domain names are used to infringe, the infringement does not
result from NSI’s publication of the domain name list, but from the registrant’s use of the
domain name on a web site or other Internet form of communication with goods or services . . .
NSI’s involvement does not extend beyond registration.” Lockheed, 194 F.3d at 985.
Here, it is undisputed that GoDaddy provided the means that allowed what the Ninth
Circuit referred to as “the registrant’s use of the domain name on a web site or other Internet
form of communication.” Specifically, GoDaddy does not dispute that “the Registrant of the
domain name PETRONASTOWERS.NET ‘logged into his account on the GoDaddy website and
directed the automated system to forward the domain name to a pre-existing website [and]
GoDaddy’s system then automatically forwarded traffic to the existing website.” Opening Br. At
9:2-5 (APP147 (GoDaddy’s Response to Interrogatory No. 16 at 16:19-22). As such,
GoDaddy’s conduct is not like NSI’s in Lockheed because there the Court found that “NSI is not
part of the process of linking domain names with potentially infringing resources such as

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websites” and “NSI is not involved with Internet resources such as Web sites and e-mail.”
Lockheed, 985 F. Supp. at 961, 965.
In addition, GoDaddy does not dispute that its domain name forwarding service was
implemented with servers owned and exclusively controlled by GoDaddy and was implemented
with a software application created by GoDaddy employees, who wrote the code. Opening Br. at
13:16-17 (APP186 (Munson Depo. at 9:3-12:12); APP187-88 (Munson Depo. at 12:16-16:10)).
GoDaddy thus did do what the Lockheed court found NSI did not do: “[t]he domain name
servers, which are outside of NSI’s control, connect domain names with internet resources such
as websites and email systems.” Lockheed, 985 F. Supp. at 953.
Despite the finding in Lockheed that “NSI is not part of the process of linking domain
names with potentially infringing resources such as websites,” Lockheed, 985 F. Supp. at 961,
965, GoDaddy contends that “the Ninth Circuit held that the registrar defendant was not liable
for contributory infringement based on its registration of domain names . . . and routing of those
domain names to websites created by the registrant.” Opp. at 11:19-21 (citing Lockheed, 194
F.3d at 982-985) (emphasis added).
Contrary to GoDaddy’s assertion, however, the Ninth Circuit’s opinion says nothing
about “routing domain names to websites created by the registrant.” Instead, the opinion states:
“when an internet user enters a domain-name combination, NSI translates that domain name
combination to the registrant’s IP address and routes the information or command to the
corresponding computer.” Lockheed, 194 F.3d at 985. The reference to “routing” in the Ninth
Circuit’s opinion is thus to routing the “information or command” that results from “NSI’s
translation of a domain name combination to the registrant’s IP address.” Id. Nowhere does the
Ninth Circuit’s opinion state that NSI routes “domain names to websites created by the
registrant,” as GoDaddy contends. Thus, when discussing the U.S. Postal Service, the Ninth
Circuit does not refer to NSI “routing domain names to websites,” as GoDaddy contends, but
instead states that “NSI does not supply the domain name combination any more than the U.S.
Postal Service supplies a street address by performing the routine service of routing mail.” Id. at

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984-985. To the contrary, NSI’s “routing service” was simply a “rote translation service” that is
not described by either the Ninth Circuit or the District Court as “routing domain names to
websites created by the registrant.”

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Accordingly, neither Lockheed nor the ACPA supports GoDaddy’s proposed blanket
immunity for registrars or shields it from liability for contributory cybersquatting as to
PETRONASTOWERS.NET.

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II.
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THE UNDISPUTED EVIDENCE SUPPORTS ALL OF THE ELEMENTS OF
CONTRIBUTORY CYBERSQUATTING
GoDaddy does not assert that there is a genuine dispute as to any of the material facts

identified by Petronas in its opening brief establishing contributory cybersquatting. Instead,
GoDaddy either ignores or mischaracterizes those facts to argue that they do not entitle Petronas
to judgment as a matter of law.

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A.

The Undisputed Facts Establish The Registrant’s Direct Cybersquatting As
A Matter Of Law

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GoDaddy fails to address the undisputed facts establishing two of the three elements of

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Registrant’s direct cybersquatting under 15 U.S.C. § 1125(d)(1)(A): (1) the Petronas mark was

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“distinctive at the time of registration of the domain name” PETRONASTOWERS.NET and (2)

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the domain name PETRONASTOWERS.NET “is identical or confusingly similar to [Petronas’s]

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mark. Opening Br. at 5:25-6:2. For the remaining element, the Registrant’s “bad faith intent to

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profit,” GoDaddy argues only that the undisputed facts to which Petronas points are legally

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insufficient to establish the Registrant’s “bad faith intent.” GoDaddy fails to address, however,

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three of the six factors in the ACPA for which Petronas identified undisputed evidence proving

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the Registrant’s bad faith intent. 15 U.S.C. § 1125(d)(1)(B)(i) (II, IV, and IX); Opening Br. at

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8:8-21. As a result, these three factors alone support a finding of Registrant’s “bad faith intent to

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profit.”

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For the remaining three factors, GoDaddy cites to no legal authority and offers only
attorney argument to contend that the material facts identified by Petronas are somehow

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insufficient to prove the Registrant’s “bad faith.” For factor (V)—the Registrant’s “intent to
divert customers from the mark owner’s online line location”—GoDaddy argues only that
Petronas “does not provide any proof that any customers actually were diverted from Petronas’s
websites to the Registrant’s.” Opp. at 17:9-11. Evidence that customers were actually diverted
is not required, however, because factor (V) refers to the Registrant’s “intent to divert customers
from the mark owner’s online location.” And because GoDaddy does not contend that the
evidence proffered by Petronas is insufficient to establish the Registrant’s “intent to divert
customers,” (Opening Br. at 6:22-7:14), factor (V) supports a finding of the Registrant’s bad
faith intent.
As for factor (VII)—the Registrant’s “registration or acquisition of multiple domain
names which the person knows are identical or confusingly similar to marks of others that are
distinctive at the time of registration,” 15 U.S.C. § 1125(d)(1)(B)(i)(VIII)—GoDaddy argues that
there is “no evidence of what the registrant ‘knew’ about the word ‘Petronas’ at the time of
registration.” Opp. at 17:14-16. But this is obviously false: the Registrant knew he was
registering the domain name PETRONASTOWERS.NET. As such, it can hardly be disputed
that he knew the domain name he was registering was “identical or confusingly similar” to the
word “Petronas,” which GoDaddy concedes was distinctive at the time of registration and a mark
owned by Petronas.
B.
GoDaddy Had Direct Control And Monitoring Of The Instrumentality The
Registrant Used to Commit Cybersquatting
GoDaddy’s argument regarding “direct control and monitoring” is indistinguishable from
an argument that the Ninth Circuit rejected in Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc.,
- - F.3d - -, 2011 WL4014320 (9th Cir. 2011). Specifically, GoDaddy argues that it did not have
“direct control and monitoring” over the Registrant’s infringement because “there is no evidence
that GoDaddy had any control over the operation or content of the website to which the registrant
caused the Disputed Domain to be routed.” Opp. at 18:13-20.

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In Louis Vuitton, the appellants similarly argued that there was insufficient evidence of
their “direct control and monitoring” of the third party’s “means of infringement” because “the
servers and services they provided and operated were not the ‘means of infringement’; instead
they maintain, the websites selling the infringing goods were the sole means of infringement.”
Louis Vuitton, 2011 WL4014320 at *3. Thus, the Louis Vitton appellants contended the District
Court erred because it “failed to distinguish between the servers or services provided by
Appellants and the websites maintained by Appellants’ customers.” Id.
The Ninth Circuit rejected these arguments: “websites are not ethereal: while they exist
virtually, in cyberspace, they would not exist at all without physical roots in servers and internet
services.” Id. Thus, “Appellants had control over the services and servers provided to the
websites. Stated another way, Appellants had direct control over the ‘master switch’ that kept
the websites online and available.” Id.
While it is true that GoDaddy did not host the pornographic website, it is undisputed that
GoDaddy used its servers to provide its domain name forwarding service that routed internet
traffic between the PETRONASTOWERS.NET domain name and the pornographic website.
Opening Br. at 9:2-15. And it is undisputed that after GoDaddy stopped providing its domain
name forwarding service, the PETRONASTOWERS.NET domain name was no longer linked to
the pornographic website. Opening Br. 4:5-9.
Accordingly, GoDaddy is incorrect when it argues that “[f]orwarding, like any form of
routing, merely delivers Internet users from a domain name to a website [and] [b]y providing a
forwarding service, GoDaddy in no way exercises the type of control over its registrant’s intent
and use of domain names that would justify imposing a landlord-like duty to monitor.” Opp. at
19:1-4. To the contrary, as the Ninth Circuit held in Louis Vuitton, “Appellants ‘physically host
websites on their servers and route internet traffic to and from those websites. This service is the
Internet equivalent of leasing real estate.’” Louis Vuitton, 2011 WL4014320 at *3.
Because it is undisputed that GoDaddy used its servers to provide its domain name
forwarding service for routing internet traffic between PETRONASTOWERS.NET and the

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pornographic website, GoDaddy “had direct control over the ‘master switch’ that kept the
website online and available” to internet traffic destined for PETRONASTOWERS.NET. Its
domain name forwarding service was thus “the Internet equivalent of leasing real estate.’” Louis
Vuitton, 2011 WL4014320 at *3.

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C.
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The Undisputed Facts Establish, At Least, GoDaddy’s Willful Blindness To
The Registrant’s Cybersquatting

GoDaddy does not contend that the materials cited on pages 10-14 of Petronas’s opening

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brief do not establish the absence of a genuine dispute as to each of the facts establishing

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GoDaddy’s knowledge of or “willful blindness” to the Registrant’s cybersquatting. Instead,

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GoDaddy picks and chooses among the evidence cited and contends that it “does not come close

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to the type of ‘exceptional circumstances’ that might trigger a duty to investigate.” Opp. at 20:9-

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14 and 21:2-5. Because GoDaddy fails to address the assertions of fact on pages 10-14 of

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Petronas’s opening brief, those facts should be considered undisputed pursuant to Fed. R. Civ. P.

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56(e).

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But even if GoDaddy had addressed all of those facts, it fails to answer the larger

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question raised by its argument, namely, if these facts do not establish “exceptional

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circumstances” requiring a registrar to at least investigate a trademark owner’s claim of

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cybersquatting, what conceivable set of facts would?

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For the undisputed facts GoDaddy contends are legally insufficient to establish its

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knowledge, its arguments are unavailing. First, GoDaddy argues that “mere notice from a

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trademark owner of alleged cybersquatting is not enough to trigger a duty to investigate.” Opp.

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at 20:1-2. GoDaddy ignores, however, that Petronas provided notice containing “all of the

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information GoDaddy would have needed under its policy to investigate a claim regarding

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‘content hosted on GoDaddy’s servers.’” Opening Br. at 11:26-12:1. And GoDaddy’s ignores

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the facts establishing that its knowledge also included, among other things, (1) that this Court

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had ordered GoDaddy to transfer PETRONASTOWER.NET to Petronas, (2) that both disputed

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domains were pointing to the same pornographic website, (3) that both disputed domains were

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registered by the same Registrant, (4) that the pornographic website used a domain registered by
the same Registrant of both of the disputed domains, and (5) that it was aware of the facts
establishing six of the nine ACPA factors demonstrating the Registrant’s bad faith intent.
Opening Br. 9-14.
In addition, GoDaddy does not dispute that the “vast majority” of the trademark claims it
has investigated resulted in GoDaddy terminating its services to the offending customers.
Opening Br. at 11:19-12:6. Instead, GoDaddy argues that this fact is “insufficient to impute to
GoDaddy knowledge of specific infringing activity.” Opp. at 20:24-28. In support, GoDaddy
cites to Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 109 (2nd Cir. 2010), for the proposition that
“a service provider must have more than general knowledge or reason to know that its service is
being used to sell counterfeit goods.” Opp. at 20:26-28. Yet the only way GoDaddy could
contend that the foregoing quote from Tiffany is relevant is if it ignores all of the other evidence
cited by Petronas and summarized above regarding GoDaddy’s specific knowledge.
Finally, GoDaddy never offers any explanation as to why its policy is to investigate only
claims of trademark infringement for websites that it hosts and not to investigate claims of
trademark infringement like the one it received regarding PETRONASTOWERS.NET. Opening
Br. at 11:25-12:1; APP169-171. But it is this policy of deliberately not investigating legitimate
complaints from trademark owners that establishes GoDaddy’s willful blindness in this case. As
the Second Circuit explained, “[a] service provider is not, we think, permitted willful blindness.
When it has reason to suspect that users of its service are infringing a protected mark, it may not
shield itself from learning of the particular infringing transaction by looking the other way.”
Tiffany, 600 F.3d at 109.
CONCLUSION
For the reasons set forth above, Petronas respectfully requests that the Court grant its
motion for partial summary judgment on GoDaddy’s liability for contributory cybersquatting.

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Dated: November 23, 2011

LAW OFFICES OF PERRY R. CLARK

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By:

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

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