Petroliam Nasional Berhad v., Inc.

Filing 143

Declaration of Perry Clark in Support of 134 MOTION for Partial Summary Judgment re Liability for Contributory Cybersquatting as to PETRONASTOWERS.NET filed byPetroliam Nasional Berhad. (Attachments: # 1 Exhibit A, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18, # 20 Exhibit 19, # 21 Exhibit 20, # 22 Exhibit 21, # 23 Exhibit 22, # 24 Exhibit 23, # 25 Exhibit 24, # 26 Exhibit 25, *** # 27 Exhibit 26 FILED IN ERROR. DOCUMENT LOCKED. DOCUMENT TO BE REFILED LATER. *** , # 28 Exhibit 27, # 29 Exhibit 28)(Related document(s) 134 ) (Clark, Perry) (Filed on 11/25/2011) Modified on 11/28/2011 (ewn, COURT STAFF).

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Ex. 13 19 20 21 22 23 24 25 26 27 28 CLARK DECL. ISO REPLY ISO MTN. PART. SUMMARY JUDGMENT Case No: 09-CV-5939 PJH Case410-cv-03052-PJH Document9 FiIedO8IlOIlO Pagel of 34 PerryR.ClarkEsq. Law of Perry R. Clark Offices 3457 Cowper Palo Alto Telephone Facsimile CA St. 94306 650 248-5817 650 248-5816 for Plaintiff Attorney PETROLIAM NASIONAL I3ERHAD STATES DISTRICT COURT UNITED NORTHERN DISTRiCT OF CALIFORNIA OAKLAND 10 II PETROLIAM NASIONAL BERHAD 12 Plaintiff DIVISION CASE Date NO September Time 900 13 Location vs. 10-CV-03052 PJH 15 2010 a.rn. Courtroom Third Floor 14 PETRONASTOWERS.NET an internet domain name 15 Defendant. 16 17 18 NOTICE OF MOTION AND MOTION FOR ORDER TRANSFERRING DOMAIN NAME PURSUANT TO 15 U.S.C. 1125D AND FOR ENTRY OF JUDGMENT 19 20 21 22 23 24 25 AND MOTION FOR ORDER TRANSFERRING AND FOR ENTRY OF JUDGMENT NOTICE OF MOTION U.S.C. Case No. 1125D 1O-CV-03052 DOMAIN NAME PURSUANT TO 15 Pifi APP070 GD-002053 Ý¿-»ìæïðó½ªóðíðëîóÐÖØ Ü±½«³»²¬ç 1 I. 2 Ú·´»¼ðèñïðñïð п¹»î ±º íì NOTICE OF MOTION TO ALL PARTIES AND COUNSEL OF RECORD: Please take notice that Plaintiff 3 Petroliam Nasional Berhad (“Plaintiff” or “Petronas”) will and hereby does makes this motion 4 for an order transferring the domain name “PETRONASTOWERS.NET” to Plaintiff Petronas 5 pursuant to 15 U.S.C. § 1125(D) and for entry of judgment. Please further take notice of the 6 hearing date for this motion: September 15, 2010 at 9 a.m. 7 II. 8 9 STATEMENT OF RELIEF REQUESTED Plaintiff Petronas requests that this Court issue an order directing GoDaddy.Com, Inc. to transfer the domain name “PETRONASTOWERS.NET” to Plaintiff Petronas pursuant to 15 10 U.S.C. § 1125(D). Plaintiff Petronas further requests an order entering final judgment in 11 Petronas’s favor in this action. On July 12, 2010, Plaintiff Petronas informed the registrant of 12 the internet domain name “PETRONASTOWERS.NET” of its intent to pursue this action at the 13 physical and email addresses provided GoDaddy and as required by 15 U.S.C. § 1125(D). Ex. 14 A. Plaintiff Petronas has not received any communication from the registrant as of the date of 15 this motion. Plaintiff Petronas also has served a copy of the motion and supporting papers as set 16 forth in declaration of service attached as Ex. B on the registrant and counsel for the domain 17 name registrar,, Inc. Plaintiff Petronas is unaware of any person or entity that 18 does, or would, oppose the motion. 19 20 III. MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION The “PETRONASTOWERS.NET” domain name should be transferred to Plaintiff 21 Petronas under the Anticyberpiracy section of the Lanham Trademark Act, 15 U.S.C. § 22 1125(D)(2). A court may issue an order transferring a domain name pursuant to 15 U.S.C. § 23 1125(D)(2) where: (1) the domain name “violates any right of the owner of a mark registered in 24 25 NOTICE OF MOTION AND MOTION FOR ORDER TRANSFERRING DOMAIN NAME PURSUANT TO 15 U.S.C. § 1125(D) AND FOR ENTRY OF JUDGMENT Case No.: 10-CV-03052 PJH ï APP071 Case4 Document9 0-cv-03052-PJH PETRONASTOWERS.NET Gold Automotive Moreover the U.S.C. 15 found New call PETRONASTOWERS.NET West and Corp. v. the violation identicalis 10 N.YM 11 domain name to Petronas 12 domain name infringes first of 34 violates to the site F.2d 1194 1075-76 the as to the and 1201 thai its or false designation 9th website not originate did of 2006. Cii. pornographic use not. of Petronas under rights site 9th is it PETRONAS. we 1979 Whether Cir. of origin the test is of confusion. for the requirement under the F.3d 1062 of origin objects Co. of Califirnia 595 likelihood the 457 domain name because infringement unfair competition there the transfer of the trademark rights PETRONASTOWERS.NET of the Lanham Anticyberpiracy section In Personam Jurisdiction B. Inc. Page4 with Petronaswhich associated designation fact Petronas strongly in Accordingly 13 false creating 0/10 domain name PETRONASTOWERS.NET with Petronas is ofAmerica Volkswagen v. 1125a by the at Inc. domain name FiIedO8f is met because that of Petronas. Is As To The Unavailable Registrant of PETRONASTOWERS.NET 14 The second 15 16 met because 17 personam 18 According 19 is 20 person who 21 1125d civil to 15 under action the owner of have paragraph name the been 2. Here according of of the is defendant in 15 U.S.C. to records the mark PETRONASTOWERS.NET 1125d U.S.C. the court in rem action for the transfer not able to obtain civil action in personam cybersquatting Petronas to would not have PETRONASTOWERS.NET i25d2Aii1 an U.S.C. would 15 over the registrant jurisdiction proper where 22 23 in for the transfer requirement had is in domain name. domain name of over jurisdiction under U.S.C. 125d2Aii1. of the registrar of the domain name was registered PETRONASTOWERS.NET by Heiko Schonenekess domain whose 24 NOTiCE OF MOTION 25 1125D AND FOR ENTRY AND MOTION FOR ORIER TRANSFERRING IOMAIN NAME PURSUANT TO 15 U.S.C. Case No. I0-CV-03 OF JUDGMENt 052 PiT-I APP072 GD-002054 Document9 Case410-cv-03052-PJH 8PM 195226 372 address is internet registrant Petronas email it tried also of personal to in met with been 10 be the registrant The contact Domain 9AU United the registrant The of the for second PETRONASTOWERS.NET Gofladdy Registrar Domain Name PETRONASTOWERS.NET under cybersquatting requirement for the exercise grounds PETRONASTOWERS.NET the Express and by Federal any The Plaintiff Although including of the registrant Ex. D. Kingdom. defendant in action jurisdiction to the respect and cc of 34 Page5 Petronas was also unable to identify so. liable as personam C. locate over the registrant. jurisdiction Because subjected do to domain name would 1125d. to EcIV London an email address provided repeatedly was unable Old Street FiledO8/1O/10 15 U.S.C. domain could be not of the Anticyberpiracy section has domain name. Certifies This Courts Authority Over the PETRONASTOWERS.NET 11 12 GoDaddy is the registrar of the domain name 13 required by the Anitcyberpiracy section 14 control and 15 Specifically 16 action 17 sufficient 18 registration 19 Petronas 20 for 21 Petronas 15 name to establish and and it the and control the GoDaddy that Court this and as has the domain name to Petronas. provides that upon the filing of an Anticyberpiracy shall expeditiously being filed along with is certification PETRONASTOWERS.NET registrar.. courts provided authority use of the domain name to the court. directing under the 125d2Di U.S.C. the domain an order to transfer authority has PETRONASTOWERS.NET this to transfer Anticyberpiracy section motion. the deposit with the court regarding the disposition GoDaddy Ex. E. As result PETRONASTOWERS.NET have been this provided all documents of the information to of the requirements domain name to met. 22 23 24 NOTICE OF MOTION 25 1125D AND FOR ENTRY ANI MOTION FOR ORDER TRANSFERRING IOMAIN NAME PURSUANT TO 15 U.S.C. Case No. OF JUDGMENT lO-CV-03052 PM-I APP073 GD-002055 Document9 Case410-cv-03052-PJH Petronas seeks Plaintiff action this PETRONASTOWERS.NET have Petronas and an order domain name. granted P. 54. Page6 of 34 Entry of Judgment II. Tn FiIedO8/1O10 relief to complete Plaintiff Accordingly PETRONASTOWERS.NET domain name the Upon that will in addition Court also the the of such an order the Court will issuance ofjudgment entry Petronas requests transferring to issue be proper under an order transferring final judgment R. Civ. Fed. the in favor of Petronas. IV. For the foregoing 10 11 entry 12 filed 13 Dated to transfer of judgment with this in favor reasons the Plaintiff CONCLUSION Petronas respectfully PETRONASTOWERS.NET of Petronas. proposed requests an order directing domain name order and proposed Petronas and to final judgment are the being motion. August LAW OFFICES OF PERRY 10 2010 R. CLARK 14 15 By 16 Is Perry R. Clark Perry 17 Aftomey R. Clark for Plaintiff PETROLIAM NASIONAL BERHAD 18 19 20 21 22 23 24 NO1CE OF MOTION 25 U.S.C. FOR ORDER TRANSFERRING DOMAIN NAME PURSUANT TO 15 1125D AND FOR ENTRY Case AND MOTION No 0-CV-03 OF JUDGMENT 052 PJH APP074 GD-002056 Case4 0-cv-03052-PJH Document9 FiIedO8/1 0/10 Page7 of 34 Ex.A 25 AND MOTION FOR ORDER TRANSFERRING AND FOR ENTRY OF JUDGMENT NOTICE OF MOTION U.S.C. Case No. 1125D 1O-CV-03052 DOMAIN NAME PURSUANT TO 15 PM-I APP075 GD-002057 Case4 Document9 0-cv-03052-PJH LAW OFACES FiledO8/1 0/10 Page8 of 34 OF PERRY R. CLARK Cowper St. ALTO CA 94306 3457 PALO TELEPHONE 650248 FACSIMILE 650 5817 618 8533 12 2010 July By Electronic Mail and Federal Schoenekess Heiko BPM Express 195226 Old Street 372 London ECI United 9AIJ Kingdom Re Whom To May Concern It Please take notice that PETRONASTOWERS.NET to proceed as set forth electronic Inc. the DOMAIN NAME PETRONASTOWERS.NET as your registration is violation counsel for Petroliam Nasional in the mail at registrar enclosed the email complaint. address We of the domain name of 15 US.C. Berhad also have 1125D and Petronas pursuant provided this notice maintained that we to that to intend section you by by GoDaddy.corn oPPETRONASTOWERS.NET. Best Regards Perry Clark APP076 GD-002058 Case41Ocv-03O52PJH PERRYR. CLARK. Law Offices of Peny 3457 Cowper Palo Alto Telephone Facsimile State Document9 FiIedO8/1O/1 Page9 of 34 BarNo. 197101 R. Clark St. CA 94306 650 248.5817 650 618-8533 Attorney for Plaintiff PETROLIAM NASIONAL BERHAD PETRONAS UNITED STATES DISTRICT CO IRT NORTHERN DISTRICT OF CALIF RNIA 10 PETROLIAM NASIONAL BERIIAD CASE 10-CV- _______ Plaintifl 11 INREJ COMPLAINF FOR VIOLA ION OF 15 U.S.C. 1125D vs. 12 CYBE PHACY 13 PETRONASTOWERSNET an internet domain DEMA1 name FOR JURY TRIAL 14 Defendant. 15 ____________________________________________ 16 17 18 19 20 21 22 23 24 25 COMPLAINT APP077 GD-002059 Case4 Document9 O-cv-03052-PJ Petroliam Nasional Plaintiff Berhad PETRONASTOWERS.NET Defendant FiIedOB/1 Petronas 0/1 for Rem its. nam an internet domain of 34 Pagel Complaint against alleges as follows THE PARTIES Plaintiff 1. principal place of business 50088 Kuala Lumpur is with the vested the internet Petronas 11 its 12 located duly organized corporation at Tower Petronas Twin Peironas is wholly-owned by ownership and control of the petroleum entire address is Malaysia. Defendant 2. 10 Petronas PETRONASTOWERS.NET wthsitc for displaying an inte obscene and highly United States Tradema ers Le Kuala Lumpur Goveinnient with City Centre of Malaysia and sources of Malaysia. iet domain ifensive name content. PETRONAS that serves as Plaintiff website marks in connection 13 14 On 3. the use its with the domain name information PETRONASTOV and belief VeriSign Inc. is the 4. nain or the associated name registry for line. GoDaddy is the domain me registrar for PETRONASTOWERS.NET. 17 5. According to GoDaddys WHOIS database 18 19 registrant 20 London av http// of PETRONASTOWERS.NET London ECIV 9AU is Heiko 22 6. because this This case Court has subject arises lable at tprogjdgodaddy Schoenekess BPM the 195226 372 Old Sliced United Kingdom. JURISDICTION 21 23 RS.NET or any other of PETRONASTOWERS.NET. 15 16 has not authorized of is nder the laws of Malaysia matter under 15 U.S.C. AND jurisdiction VENIJ1 under U.S.c. 1331 and 1338b 1125d. 24 25 -2 _______________________ COMPLAINT APP078 GD-002060 Case41O-cv-03052-PJH Court has This 7. PETRONASTOWERS Venue 8. because the located NET is in this judicial in FiIed08/10/1 in this judicial for registry This to any particular of 34 Pagel nt domain name 1125d. district pursuantt 15 PETRONASTOWERSNI 125d2A U.S.C. is VeiiSign which Inc. is district INTRADISTRJCT 9. the defen rem jurisdiction over under 15 U.S.C. proper domain name Document9 is an division intellectual property case to Civil L.R. pursuant ASSIGNME and as resu there is no basis for assignment 3-2c. FACTUAL ALLEGATIONS 10 10. 1974 under the companies 17 11 August 12 government and 13 Malaysia through 14 Petronas the acronym Plaintiff is vested Act of 1965. with the entire where wholly nal Berhad was wned by on incorporated the Malaysian the petmleum resources in Act of 1974. mission centers on corporate of the people and the nations is It Nas ownership and control the Petroleum Development Pelronass 11. for Petroliam 15 being 16 Malaysian people 17 petroleum 18 one of the leading multi-national oil and gas companies 19 one of the Fortune Global 20 operations 21 its respon 22 12. 23 the 24 cultural largest Pefronas more thirty In 1996 free standing commercial also serves the interests 500 largest corporations three Plaintiff 33 of the in the world. center in ccess .s has earned of 2009 its people as it ranking as has Petronas of the Petronas Twin Towers Kuala Lurnpur The and and emj oys approximately 30000 completed constructior towers in the world and educational whose national Malaysias feguarding of the Mal ysian nation countries worldwide Peironas and the well-being to the well- people. operates and the Malaysian nation by developing resources. in it in particul to contribute ibility Petronas Twin Towers largest city and its serve as headquarters for 25 ____________________ -3- __________________ COMPLAINT APP079 GD-002061 Case41 and house the offices of Petronas IBM adjoining Suria KLCC including an museum art Convention and 10 14. mark 13 TOWERS 14 15 15. in Southeast 16. and The Pc Co.. and Reuters. Petronas science and KLCC locat of 34 Pagel Dmestic -onas the corporations Twin Towers ading symphony ha Gallery aquarium Aquaria that cultural including and the facilities Philharmonic Hall Peironas hnology owns Pelronas Twin Towers the Petronas and all right Petronas around the famous is center discovery Kuala Lumpur in the adjoining are wi arid and one of the most ely and inseparably visited identified PETRONAS. brand and the trademark its and landmark Asia to United title also is the owner States ademaxk No. 2969707 of the trademai PETRONAS TWIN for the others. At all relevant times Petronas identify itself as the source 16 major foreign Philharmonic Orchestra iconic PETRONAS. 12 the world-class As an with Petronas 11 0/1 Center. 13. destinations FiIedO8/1 mall complex house some of Malaysias to the Malaysian Petrosains many other Boeing McKinsey Microsoft home Document9 0-cv-03052-PJ Petronas 17 Petronass websites. 18 uses 19 Website. 20 redirect 21 uses its of the goods and services uses its mait for example it in mark to among other things provides. internet its dom domain names associated name owned by with www.petronamy. the 22 PETRONAS Petronas Petronass sole PETRON mark also to the Official 17. Petronas owns Peironas several Twin Towers other domain Website also uses official 24 the website names that PETRONAS website uses exclusively 23 Petronas official containing As with mark the Official perate al Petroi Website which and associated ut the Peironas that Petronas mirrorwebsites main name for the information the Official Petronas with its Twin Towers Petronas owns other 25 __________ COMPLAINT -4- ____________ APP080 D-002 062 Case41O-cv-O3O52PJH names such domain Document9 petronastwintowerscom which as the defendant According domain to publicly available LWWW.pETRoNAsTOWERSNET displays obscene arrives at the 10 mark Go Dad is users to the official the domain as name registrar for The domain name address for as soon has never authoiized comp GoDaddys public Whols.aspxdoman 12 PETR0NAsT0wIERS.NEr 13 Streed London Go Daddys records known as domain name pornographic users ler Contact l6 17 website that browser internet 22. doi 9AU records am mark or any other name. http// ito that Schoenel ess that the Adniinisti BPM live of the the registrant Old 195226372 United Kingdont also state Contact and the Technical 44.2076636606. 18 PET NAS its WHOIS 1-leiko is PETRONASTOWERS.NET 15 of onastoweis.netprogidzgodaddy London EC1V for the the use WWW.PETRONASTOWER5.NET in the 11 21. records the internet is and highly offensive content Petronas 20. 14 web site. 19. Petronas redire WWW.PETRONASTOWERS.NE name of 34 Pagel3 website. 18. FiledO8/10/1 RPM Plaintiff 195226 Petronas has 20 domain been unable WWW.PETRONASTOWERS.NET 21 Go Petronas Daddy. 125d2A as well as PETRONASTOWER5.NEr 23 on information and belief to domain the registrar Londoi to locate has sent notice name is the re name based on domain copy of that section 22 name 372 Old Streed London 19 registrar domain of its th inten to the registrant at the postal and Go Daddy Schoenekess ECIV 9AU strant ileiko United Kingdom. of the infonnation provided to proceed under 15 by the U.S.C. the ei as set forth all addresses thove. he or she provided Petronas also attempted 24 25 -5- ___________ _____________________ _____ COMPLAINT APP081 GD-002063 Case41O-cv-03052-PJH to such notice provide placed Document9 by telephornng numbers to those teiephone FiIedO8/1O/1 the telephone numbers Petronas in. te of 34 Go Daddy records but calls were not answerecL CLAIM FOR RELIEF UNDER 23. Pagel4 incorporates 15 U.S.C. and re-alleges the precedin 125d2A as if set forth fully paragraphs herein. The domain 24. name of the registered mark the owner PETRONASTOWERS.NEI PETRONAS and violates marks prot the rights of Petronas ted under 15 as 1125a U.S.C. andc. 25. Petronas of the domain 10 registrant 11 15 U.S.C. has been unable to find name 15 In light 16 all of the foregoing Petronas The Court 1. transfer by anal jurisdiction over ising the diligence the described in 1125dX2XAX1illaa. RELIEF 14 establish per PETRONASTOWERS.NET 12 13 or right title 2. respectfully issue an order that and interest Alternatively 17 Dated Go Daddy in the domain following requests as the name registrar riain name PETROl the Court issues an order forever relief ca immediately ASTOWERS.NET to ceiling the Petronas domain name PETRONASTOWERS.NET. 18 SOUGHT July 122010 21 Perry omeys 22 Petr ham Clark for Plaintiff Nasional Berhad 23 24 25 ____ -6- COMPLAINT ____________ APP082 D-002 064 Case41O-cv-03052-PJH Document9 JURY 1. Dated July Plaintiff Petronas respectfully FHedO8/1O/1 Pagel5 of 34 DEMAND demands jury tth on all issues so triable 12 2010 By erry it orneys Peti Clark for Plaintiff 11am Nasional Bethad 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 7-- _____________________________ COMPLAINT APP083 GD-002065 Document9 Case410-cv-03052-PJH R. Perry Law Page22 of 34 Clark Esq. of Perry R. Clark Offices 3457 FlledO8IlOf 10 Cowper Palo Alto Telephone Facsimile CA St. 94306 650 248-5817 650 248-5816 for Plaintiff Attorney PETROLIAM NASIONAL BERHAD STATES DISTRICT COURT UNITED NORTHERN DiSTRICT OAKLAND 10 11 PETROLIAM NASIONAL BERHAD 12 Plaintiff 13 14 OF CALIFORNIA DIVISION CASE NO iO-CV-03052 PJH CERTIFICATE OF SERVICE vs. PETRONASTOWERS.NET an internet domain name 15 Defendant. 16 17 18 19 20 21 22 23 24 25 CERTIFICATE Case No. OF SERVICE 10-CV-03 052 Pill APP084 GD-002072 Document9 Case410-cv-03052-PJH NAME PURSUANT 1015 ORDER TRANSFERRING DOMAIN FOR ENTRY OF JUDGMENT placed 1. for exhibits all of the motion copy thereto in FedEx Express addressed Heiko Motion as Federal U.S.C. of 34 AND MOTION FOR 1125D AND follows Express envelope with postage pre-paid to Schonenekess BPM 372 OF MOTION NOTICE served Plaintiffs Perry Clark state that Page23 FiledO8IlOIlO 195226 Old Street LondonEclV9ALJ 10 United Kingdom 11 Tel. 12 2. 13 44.2076636606 the Federal deposited Federal Express drop box on August 14 3. emailed pdf copy 15 4. emailed copy 16 5. of the motion of the motion to identified in above Paragraph in 102010. to on August counsel for GoDaddy 10 2010. on 102010. August 17 Express envelope of the motion in copy placed addressed 18 paid 19 John Slafsky 20 Wilson 21 650 22 Palo Alto Mail envelope with first class postage pre to Esq. Goodrich Sonsini Page U.S. Rosati PC Miii Road CA 94303 23 24 NOTICE OF MOTION 25 1125D AND FOR ENTRY AND MOTION FOR ORDER TRANSFERRiNG DOMAIN NAME PURSUANI 10 15 U.S.C. Case No. OF JUDGMENT 1O-CV-03052 PJH APP085 GD-002073 Document9 Case41O-cv-03052-PJH 6. Mailbox declare Dated the U.S. deposited August under on August penalty FiIedO8/10/10 Mail envelope 10 identified Page24 in Paragraph of 34 above in U.S. 2010. of perjury that the forgoing is true and correct. 10 2010 By /s/PerryR. Clark Perry R. Clark 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 NOTICE OF MOTION 25 U.S.C. No. FOR ORIER TRANSFERRING DOMAIN NAME PURSUANT TO 15 1125D AND FOR ENTRY Case AND MOTiON OF JUDGMENT 1O-CV-03052 PJH APP086 GD-002074

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