Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 152

RESPONSE (re 112 MOTION for Summary Judgment Notice of Motion, Motion, and Memorandum of Points and Authorities ISO Go Daddy's Motion for Summary Judgment, 126 Administrative Motion to File Under Seal re OPPOSITION TO MOTION FOR SUMMARY JUDGMENT ) filed byPetroliam Nasional Berhad. (Clark, Perry) (Filed on 12/9/2011)

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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
OPPOSITION TO DEFENDANT
GODADDY.COM, INC’S MOTION FOR SUMMARY JUDGMENT

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OPP. MTN. SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

Table of Contents

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I. 

GODADDY COMMITTED CONTRIBUTORY CYBERSQUATTING .................... 2 
A. 

The Evidence Of The Registrant’s Cybersquatting Is Overwhelming
And Was Well Known To GoDaddy ................................................................... 3 

B. 

GoDaddy Exercised Direct Control And Monitoring Over Its Domain
Name Forwarding Service For The Disputed Domains .................................... 5 

C. 

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GoDaddy Was, At Least, Willfully Blind To The Registrant’s
Cybersquatting. ..................................................................................................... 6 

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II. 

GODADDY IS LIABLE FOR DIRECT CYBERSQUATTING .................................. 7 

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A. 

GoDaddy Was The Registrant’s Authorized Licensee When It “Used”
The Disputed Domains ......................................................................................... 7 

B. 

The Undisputed Facts Establish That GoDaddy Had A Bad Faith
Intent To Profit From The Petronas Marks ....................................................... 8 

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1. 

GoDaddy’s Argument Regarding “Volitional Conduct” Is
Irrelevant To Petronas’s Cybersquatting Claim ................................... 8 

2. 

GoDaddy Did Not Have “Reasonable Grounds To Believe” Its
Use Of The Disputed Domains Was A “Fair Use Or Otherwise
Lawful” ...................................................................................................... 9 

3. 

GoDaddy Continued To Provide Its Domain Name Forwarding
Service Because Of Customer Demand................................................. 11 

4. 

GoDaddy Intended To Profit From Petronas’s Marks By
Establishing Its Immunity From Liability For Its Conduct
Concerning The Disputed Domains ...................................................... 13 

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III. 

GODADDY WAS NOT ACTING AS A REGISTRAR PERFORMING THE
REGISTRATION OR MAINTENCE OF THE DISPUTED DOMAIN
NAMES ............................................................................................................................ 15 

IV. 

THE PETRONAS TRADEMARK REGISTRATION SHOULD NOT BE
CANCELLED ................................................................................................................. 20 

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A. 

GoDaddy Lacks Standing To Seek Cancellation Of The Petronas
Registration ......................................................................................................... 20 

B. 

Even If GoDaddy Had Standing, There Is No Evidence Of
Abandonment ...................................................................................................... 22 

C. 

GoDaddy Points To No Evidence That Would Support Cancellation
Under Section 44(e) ............................................................................................. 24 

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OPP. MTN. SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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CASES 
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A&H Trans., Inc. v. Save Way Stations, Inc., 115 U.S.P.Q. 251,135 A.2d 289, 335
(MD. 1957) ....................................................................................................................... 24

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Abdul–Jabbar v. Gen. Motors Corp., 85 F.3d 407, 411 (9th Cir.1996) ....................................... 23

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Academy of Motion Picture Arts and Science v. Network Solutions, 989 F. Supp.
1276 (C.D. Cal. 1997). ...................................................................................................... 10

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Avedis Zildjian Co. v. Fred Gretsch Mfg. Co., 251 F.2d 530 (2nd Cir. 1958) ............................. 21

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Baidu, Inc. v. Registration.com, Inc., 760 F. Supp.2d 312, 320 (S.D.N.Y. 2010)........................ 15

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Bellagio Jewelry, Inc. v. Croton Watch Co., Inc., 2008 WL 3905895, *5 (C.D.
Cal. 2008) .......................................................................................................................... 23

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Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1047 (9th
Cir.1999) ........................................................................................................................... 22

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Coca–Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254 (9th Cir.1982)....................................... 22

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Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc., 304 F.3d 1167, 1175
(11th Cir. 2002)................................................................................................................. 23

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Dell Inc. v. BelgiumDomainsLLC, 2007 WL 6862342 *5 (S.D. Fla. 2007) ................................. 16

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Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931, 935 (9th
Cir.2006) ........................................................................................................................... 22

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Emergency One, Inc. v. Am. FireEagle Ltd., 228 F.3d 531, 535–37 (4th Cir.2000) .................... 23
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Finovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 265 (9th Cir. 1996) ..................................... 14

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Ford Motor Co. v. Greatdomains.Com, Inc., 177 F. Supp.2d 635, 646 (E.D. Mich.
2001) ................................................................................................................................. 10

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General Healthcare Limited v. Qashat, 254 F. Supp.2d 193, 204 (D. Mass. 2003) .................... 21

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Ging v. Showtime Entertainment, Inc., 570 F. Supp. 1080, 1084 (D. Nev. 1983)........................ 21

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Grocery Outlet Inc. v. Albertson's Inc., 497 F.3d 949, 952–53 (9th Cir. 2007) ........................... 23
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Hard Rock Café Licensing, Inc. v. Concession Services, Inc., 955 F.2d 1143, 1149
(7th Cir. 1992)................................................................................................................... 15

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In Re Houbigant, Inc., 914 F. Supp. 997, 1002 (S.D.N.Y. 1996) ................................................. 21

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OPP. MTN. SUMMARY JUDGMENT
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Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir.
1999) ................................................................................................................................. 10

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Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 (C.D. Cal.
1997) ................................................................................................................................. 10
Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., —F.3d—(9th Cir. 2011),
2011 WL 4014320, *3 ........................................................................................................ 4
Panavision Int’l. v. Toeppen, 141 F.3d 1316, 1319 (9th Cir 1998) .............................................. 10

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Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 755 (9th Cir.2006)............................................ 22

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Solid Host, NL v. Namecheap, Inc., 652 F. Supp.2d 1092, 112 (C.D. Cal.2009) ......................... 10

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Star–Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1396 (9th Cir.1985)....................... 23

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Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 109-110 (2nd 2010) ............................................... 14

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Transamerica Corp. v. Moniker Online Services, LLC, 672 F. Supp.2d 1353, 1367
(S.D. Fla. 2009)................................................................................................................... 3

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Verizon California, Inc. v. OnlineNIC, Inc., 647 F. Supp.2d 1110, 1126 (N.D. Cal.
2009) ................................................................................................................................. 16

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Yard-Man, Inc. v. Getz Exterminators, Inc., 157 U.S.P.Q. 100, 1968 WL 8094
(T.T.A.B. 1968) ................................................................................................................ 22

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STATUTES 

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15 U.S.C. § 1117(d) ........................................................................................................................ 8

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15 U.S.C. § 1125(d)(1)(B)(i) .......................................................................................................... 6

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15 U.S.C. § 1127 ..................................................................................................................... 22, 24

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15 U.S.C. §1064 ............................................................................................................................ 20

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15 U.S.C. §1125(d)(1)(D) ............................................................................................................... 2

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Fed. R. Civ. P. 56(d) ............................................................................................................. 1, 3, 12

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TREATISES 
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3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §
17.12 at 17–20 (4th ed. 2008) ........................................................................................... 23

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McCarthy J., McCarthy on Trademarks and Unfair Competition, §20:12 (2010) ....................... 22

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Restatement, Torts, §719 Comment b ........................................................................................... 24

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OPP. MTN. SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

INTRODUCTION

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GoDaddy’s motion should be denied as to contributory cybersquatting. The undisputed

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evidence establishes that GoDaddy was, at least, “willfully blind” to the registrant’s

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cybersquatting. And GoDaddy is factually incorrect in arguing that there is no evidence of

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“direct control and monitoring” because its conduct here is not “virtually identical”—or even

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materially similar—to that of the defendant in Lockheed Martin Corp. v. Network Solutions, Inc.,

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194 F.3d 980, 984 (9th Cir. 1999).

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GoDaddy’s motion also should be denied as to direct cybersquatting because the
undisputed terms of GoDaddy’s agreements with the registrant establish that it was the

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registrant’s “authorized licensee.” In addition, GoDaddy had a “bad faith intent to profit” from

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using Petronas’s trademarks to meet customer demand for its domain name forwarding service

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and to set a “precedent” establishing its immunity from liability for providing that service to

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customers despite its knowledge of their cybersquatting.

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In addition, GoDaddy is not immune from cybersquatting liability because its conduct

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was not that of a registrar performing “the act of registration of a domain name.” The “safe

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harbor” for registrars is strictly limited to the “registration and maintenance of a domain name”

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and the undisputed facts establish that GoDaddy’s domain name forwarding service does not

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constitute “registration” or “maintenance” of a domain name.

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GoDaddy’s request that the Court cancel Petronas’s trademark registration should be

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denied because GoDadddy offers no evidence (1) of its standing, (2) of Petronas’s abandonment

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of its trademarks, or (3) that the trademark examiner incorrectly approved of the identification of

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the goods in the registration. And, in any event, cancellation of the registration would not

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warrant judgment in GoDaddy’s favor on any of Petronas’s claims because Petronas owns valid

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trademark rights that were infringed regardless of the registration.

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GoDaddy’s motion also should be denied to the extent it is based on the absence of facts

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that are unavailable pursuant to Fed. R. Civ. P. 56(d) due to GoDaddy’s improper refusal to

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provide discovery.

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OPP. MTN. SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

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I.

GODADDY COMMITTED CONTRIBUTORY CYBERSQUATTING
In enacting the ACPA, Congress recognized the existence of a cause of action for

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“secondary liability” for cybersquatting. The legislative history of the ACPA cited by

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GoDaddy’s expert, Mr. Palage, states “[t]he bill, as amended, also promotes the continued ease

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and efficiency users of the current registration system enjoy by codifying current case law

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limiting secondary liability of domain name registrars and registries for the act of registration of

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a domain name.” Palage Decl. at 3:26-27; OPPAPP000093 at 8 (Senate Report). The legislative

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history also cites to the Ninth Circuit’s decision in Panavision Int’l. v. Toeppen, 141 F.3d 1316,

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1319 (9th Cir 1998) recognizing the existence of contributory liability (although it found the

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particular defendant not liable) in the context of cybersquatting as well as two similar decisions

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by district courts: Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 (C.D. Cal.

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1997) and Academy of Motion Picture Arts and Science v. Network Solutions, 989 F. Supp. 1276

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(C.D. Cal. 1997). Id. at 14-15 n 11. Thus, in enacting the ACPA, Congress recognized the

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existence of a cause of action for contributory cybersquatting and, rather than abolishing it

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altogether, sought only to limit it by inserting a narrow limitation on liability “for the act of

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registration of a domain name” by a registrar or registry. As discussed below, this limitation on

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liability does not apply in this case because GoDaddy’s conduct here had nothing to do with “the

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act of registration of a domain name.”

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Courts apply the same analysis to contributory cybersquatting claims as they apply to

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contributory trademark claims. Solid Host, NL v. Namecheap, Inc., 652 F. Supp.2d 1092, 112

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(C.D. Cal.2009) citing Ford Motor Co. v. Greatdomains.Com, Inc., 177 F. Supp.2d 635, 646

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(E.D. Mich. 2001). To prevail on a claim of contributory trademark infringement, a plaintiff

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must establish that the defendant “continued to supply its services to one who it knew or had

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reason to know was engaging in trademark infringement.” Louis Vuitton, 2011 WL 4014320, *3.

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Where, as here, a defendant provides a service, the plaintiff also needs to establish that the

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defendant had “direct control and monitoring of the instrumentality used by a third party” to

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Case No: 09-CV-5939 PJH

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commit cybersquatting. Id. citing Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d
980, 984 (9th Cir. 1999).
A.

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The Evidence Of The Registrant’s Cybersquatting Is Overwhelming And
Was Well Known To GoDaddy

Petronas’s motion for partial summary judgment on GoDaddy’s liability for contributory
cybersquatting as to the domain name petronastowers.net (Doc. No. 120 and incorporated herein)
sets forth the undisputed facts establishing both the registrant’s direct liability for cybersquatting
and GoDaddy’s knowledge of those facts. Among other things, the undisputed facts in
Petronas’s motion establish that six of the nine “bad faith” factors in the ACPA strongly support
the conclusion that the registrant acted with a bad faith intent and that GoDaddy was aware of
those facts.
In its motion, GoDaddy alleges only that there is “insufficient evidence of the registrant’s
intent.” Motion at 17:26. Thus, GoDaddy does not contend that there is insufficient evidence
supporting the other elements establishing direct cybersquatting by the registrant (i.e. registrant’s
“use,” that the Disputed Domains were “identical or confusingly similar to” Petronas’s mark,
that Petronas’s mark was “distinctive at the time of registration” of the Disputed Domains, etc.).
GoDaddy’s contention regarding evidence of the registrant’s bad faith is, in fact, even
more narrow than the typical “no evidence” summary judgment argument: GoDaddy argues that
“[d]iscovery has closed, yet Petronas had not obtained, nor even sought, any discovery from the
party that allegedly engaged in cybersquatting.” Motion at 17:19-20. According to GoDaddy,
“[w]ithout such discovery, it is impossible to determine the registrant’s motives in registering the
Disputed Domains, and thus whether he acted with bad faith intent to profit from the Petronas’s
trademarks.” Motion at 17:21-22.
This contention suffers from myriad defects of reasoning, fact, and law. First, the notion
that discovery is needed from the registrant to prove the registrant’s bad faith intent is based on
an extremely naïve assumption, namely, that the registrant would admit his bad faith intent. It is
axiomatic that bad faith can almost never be proven with the testimony of the person accused. In

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any event, Petronas repeatedly sent the registrant notice of its allegations of cybersquatting as
well as the pleadings from this action and the two in rem actions and the registrant never
responded, much less disputed the allegations of his bad faith intent (or any other allegations).
OPPAPP000108, 123, 141. And GoDaddy’s Fed. R. Civ. P. 30(b)(6) witness, Ms. Anderson,
was unaware of any “any complaint or any communication from the registrant of [the disputed]
domain names when Go Daddy stopped providing its domain name forwarding service.”
OPPAPP000014-15 (Anderson Depo. at 65:23-66:2).
Second, GoDaddy’s argument that Pertronas should have “sought” discovery from the
registrant ignores this Court’s finding, in two separate cases, that the registrant “could not be
located” despite Petronas’s best efforts. OPPAPP000108, 123, 141 (Pleadings and Orders from
In Rem Actions). It is unclear how GoDaddy expects that Petronas would have “sought
discovery” from a third party that could not be located and whose only known addresses were
outside the United States.
Third, if this Court agrees with GoDaddy that evidence from the registrant is essential to
proving Petronas’s case of contributory cybersquatting, then the Court should deny (or at least
defer) GoDaddy’s motion under Fed. R. Civ. P. 56(d) in light of Petronas’s motion to compel
GoDaddy to provide discovery regarding information in its possession concerning the registrant,
including its communications with him. As set forth in the Fed. R. Civ. 56(d) declaration of
counsel filed herewith, GoDaddy has refused to produce documents regarding the registrant and
failed to produce a Fed. R. Civ. P. 30(b)(6) with knowledge of GoDaddy’s communications with
the registrant. Clark Decl. Indeed, GoDaddy produced no information regarding any
communication between it and the registrant concerning any Petronas’s trademark claims or this
litigation—other than Fed. R. Cir. P. 30(b)(6) witnesses who testified they were unaware of any
such information. Id.
Fourth, in light of this Court’s two judgments finding that the Disputed Domains are
“confusingly similar” to Petronas’s trademark and the failure of the registrant or GoDaddy to
point to any valid reason for the registrant’s use of the Disputed Domains to direct Internet traffic

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to a pornographic website located at a domain also owned by the registrant, it is more than
reasonable to infer that the registrant acted with a bad faith intent to profit.
Fifth, GoDaddy’s assertion that Petronas is “not aware of any complaints from customers
regarding the Disputed Domains” is irrelevant. Motion at 17:24-25. The ACPA imposes
liability for use of a domain name that is “identical or confusingly similar to [a] mark” and does
so “without regard to the goods or service of the parties.” 15 U.S.C. § 1125(d)(1)(A).

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B.

GoDaddy Exercised Direct Control And Monitoring Over Its Domain Name
Forwarding Service For The Disputed Domains

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As with the evidence establishing the registrant’s liability for cybersquatting, Petronas’s

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motion for partial summary judgment sets forth the undisputed facts establishing GoDaddy’s

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“direct control and monitoring” over the instrumentality used by the registrant to commit

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cybersquatting, i.e. GoDaddy’s domain name forwarding service. (Doc. No. 120 and

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incorporated as if set forth fully herein).

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In the present motion, GoDaddy does not point to any evidence describing what exactly it

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did with respect to the Disputed Domains. Motion at 18:3-23. Instead, GoDaddy argues that

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“[t]he facts here are virtually identical and mandate the same result” as those in the Lockheed

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case. Motion at 18:15. GoDaddy states (with no citation to the record or any facts) that

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“GoDaddy provided registration services to the registrant of the Disputed Domains, but it

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exercised no control over the alpha-numeric string selected by the registrant – the act that

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allegedly amounted to cybersquatting.” Motion at 18:15-17. This allegation, however, is both

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factually false and directly contrary to Ninth Circuit case law.

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As an initial matter, it is not true that “the act that allegedly amounted to cybersquatting”

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was the selection of “the alpha-numeric sting” by the registrant. The registrant’s cybersquatting

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here resulted from the registrant’s use of GoDaddy’s domain name forwarding service on

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GoDaddy’s servers to divert Internet traffic to a pornographic website from domain names that

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were “identical or confusingly similar” to Petronas’s trademarks. (Doc. No. 69 ¶ 77-101

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(Amended Complaint)). The Ninth Circuit has specifically rejected the argument GoDaddy

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makes here that it did not have “direct control and monitoring” over the cybersquatting because
it was the registrant who chose to connect the Disputed Domains to the pornographic website.
Louis Vuitton, 2011 WL 4014320, *3 (rejecting argument that appellants’ customer’s “websites
selling infringing goods” and not appellants’ “servers and internet services they provided” “were
the sole means of infringement.”). As the Ninth Circuit explained, “[w]ebsites are not ethereal;
while they exist virtually, in cyberspace, they would not exist at all with physical roots in servers
and internet services.” Id. GoDaddy’s domain name forwarding service is no different: without
GoDaddy’s forwarding servers and domain name forwarding service, no connection would have
existed between the Disputed Domains and the pornographic website. And as a result, GoDaddy
exercised “direct control and monitoring” over the registrant’s means of cybersquatting.
C.

GoDaddy Was, At Least, Willfully Blind To The Registrant’s
Cybersquatting.

Assuming for the sake of argument that GoDaddy “did not have knowledge that the

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registrant was cybersquatting” (Motion at 18:24-25), this would still not be grounds for granting

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GoDaddy’s motion. It is well settled that “willful blindness is equivalent to actual knowledge for

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purposes of the Lanham Act.” Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 109-110 (2nd 2010)

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(“A service provider is not, we think, permitted willful blindness. When it has reason to suspect

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that users of its services are infringing a protected mark, it may not shield itself by looking the

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other way.”) citing Finovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 265 (9th Cir. 1996) (“a

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swap meet cannot disregard its vendors’ blatant trademark infringement with impunity.”).

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Here, GoDaddy does not contend that it had no reason to suspect that the registrant was

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engaged in cybersquatting. Instead, GoDaddy states only that Petronas “provided insufficient

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information from which GoDaddy could determine the registrant was engaged in

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cybersquatting.” Motion at 19:7-8. But whether “GoDaddy could determine the registrant was

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engaged in cybersquatting” based on the information GoDaddy possessed before it conducted

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any investigation is irrelevant to the issue of willful blindness—the question is whether

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GoDaddy suspected the registrant was engaged in cybersquatting: “[t]o be willfully blind, a

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person must suspect wrongdoing and deliberately fail to investigate.” Tiffany, 600 F.3d 93, 109110 citing Hard Rock Café Licensing, Inc. v. Concession Services, Inc., 955 F.2d 1143, 1149
(7th Cir. 1992). And because it is undisputed that “GoDaddy took no action on Petronas’s
trademark claims other than (i) providing Petronas with information to assist it in seeking a
transfer order, and (ii) locking each domain upon notice of commencement of a legal
proceeding,” GoDaddy’s failure to address whether it had reason to suspect that the registrant
was engaged in cybersquatting fatally undermines its motion for summary judgment.
II.

GODADDY IS LIABLE FOR DIRECT CYBERSQUATTING

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GoDaddy has never disputed—and does not in its motion—that “the Disputed Domains
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are identical or confusingly similar to Petronas’s distinctive or famous trademark.” Motion at
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11:20-21. The only issues GoDaddy raises in its motion regarding direct cybersquatting are (1)
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whether it “used” the Disputed Domains and (2) whether it did so with a “bad faith intent to
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profit from Petronas’s mark”—neither of which support the grant of its motion.
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A.

GoDaddy Was The Registrant’s Authorized Licensee When It “Used” The
Disputed Domains

GoDaddy is liable under the ACPA for “using” the Disputed Domains as the “registrant’s
authorized licensee.” 15 U.S.C. §1125(d)(1)(D).
According to GoDaddy’s agreements with the registrant—the terms of which are
undisputed—the registrant granted GoDaddy “the right to terminate Your [the registrant’s]
access to the Services at any time, without notice, for any reason whatsoever.” Jett Decl. Ex. 1 at
3 (GoDaddy Universal Terms of Service for GoDaddy Software and Services). Under the
agreement, “Services” specifically include “using our systems to forward a domain, URL, or
otherwise to a system or site hosted elsewhere.” Id. at 10 (Section B incorporating “Domain
Name Registration Agreement”); Jett Ex. 3 at 5(“Domain Name Registration Agreement”).
Moreover, Laurie Anderson, GoDaddy’s Fed. R. Civ. P. 30(b)(6) deponent on the topic of
“agreements covering the services GoDaddy provided with respect to the disputed domain

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names,” testified that she was unaware of “anything in any of the agreements between Go Daddy
and the registrant of the domain names petronastower.net and petronastowers.net that would
have prevented it [GoDaddy] from stopping its domain name forwarding service for those
domain names.” OPPAPP000007-8 (Anderson 59:24-60:9; 65:15-21). As such, GoDaddy’s
agreements with the registrant granted it a license to freely use the Disputed Domains in
connection with its domain name forwarding service and to continue or discontinue the service
based on GoDaddy’s own independent decision.
GoDaddy argues that “[t]here is also no evidence of communication between GoDaddy
and the registrant in which the registrant might have granted GoDaddy a license to use the
Disputed Domains.” Motion at 12:11-13. Putting aside that this statement fails to account for
the agreements between the registrant and GoDaddy referenced above, to the extent facts
regarding such communications are “essential to justify [Petronas’s] opposition” to GoDaddy’s
motion, the Court should deny the motion or take some other action identified in Fed. R. Civ. P.
56(d). As set forth in the accompanying declaration, Petronas has sought, and GoDaddy has
refused to provide, discovery regarding GoDaddy’s communications with the registrant and this
dispute is the subject of a pending motion to compel. Clark Decl.
B.

The Undisputed Facts Establish That GoDaddy Had A Bad Faith Intent To
Profit From The Petronas Marks

GoDaddy makes four arguments regarding “bad faith intent,” none of which are availing.
1.

GoDaddy’s Argument Regarding “Volitional Conduct” Is Irrelevant
To Petronas’s Cybersquatting Claim

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GoDaddy contends that it did not engage any “volitional conduct” with respect to its

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“initial conduct in forwarding the Disputed Domains to a third party website” and thus did not

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have a “bad faith intent.” Motion at 13:11-14. The conduct for which GoDaddy is liable for

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cybersquatting, however, is not its “initial conduct in forwarding the Disputed Domains” but its

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undisputed and repeated refusal to stop forwarding the Disputed Domains after being put on

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notice of the infringement of Petronas’s trademarks. It is this conduct that “compel[s] the

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inference that [GoDaddy] knew or recklessly disregarded the fact that the registrant was
misusing domains names” and is sufficient to “satisfy the bad faith prong by creating an
inference that [GoDaddy] intended to profit from [Petronas’s] marks.” Transamerica Corp. v.
Moniker Online Services, LLC, 672 F. Supp.2d 1353, 1367 (S.D. Fla. 2009) (defendants’
repeated refusal to stop infringing behavior was “part of a scheme by which they profit from the
misuse of others’ trade and service marks.”).
Even if the conduct on which GoDaddy’s liability is based in this case were limited to its
“initial conduct”—which it is not—GoDaddy cites to no authority that “volitional conduct” is
required to establish cybersquatting. Instead, GoDaddy cites to several irrelevant cases applying
copyright law. Motion at 13:20-26. The Ninth Circuit, however, has expressly rejected the
argument that a defendant’s “contribution to infringement must be intentional for liability to
arise” for trademark infringement. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., —
F.3d—(9th Cir. 2011), 2011 WL 4014320, *3 (“An express finding of intent is not required.”).
2.

GoDaddy Did Not Have “Reasonable Grounds To Believe” Its Use Of
The Disputed Domains Was A “Fair Use Or Otherwise Lawful”

GoDaddy also argues that there is “no evidence of bad faith intent” in light of a “catch-all
provision [in the ACPA] that is directly on point: ‘Bad faith intent described under subparagraph
(A) shall not be found in any case in which the court determines that the person believed and had
reasonable grounds to believe that the use of the domain name was a fair use or otherwise
lawful.” Motion at 14:9-12. According to GoDaddy, “the undisputed evidence establishes that
GoDaddy’s intent . . . was to comply with GoDaddy’s standard operating procedures and to
implement the UDRP.” Motion at 14:13-16.
The evidence, however, is far from “undisputed” that GoDaddy’s intent was to follow its
policy or the UDRP with respect to the Disputed Domains. In response to an interrogatory,
GoDaddy stated that its “intent has been to provide registrar services concerning the domain
names ‘petronastower.net’ and ‘petronastowers.net.’” OPPAPP000021 at 6:25-26. As for

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following its policy or standard procedure, Matthew Bilunes, GoDaddy’s Fed. R. Civ. P.
30(b)(6) witness on the topic of GoDaddy’s “trademark policy and how/whether the domain
names were treated within it” and GoDaddy’s “general policies and procedures . . . as well as the
specific handling of the two disputed domain names,” testified that he did not know “what policy
was applied to the trademark claim submitted by Petronas” regarding either Disputed Domain.
OPPAPP000043-44, 40 (Bilunes Depo. at 9:20-10:4; 7:1-5); OPPAPP000051 at 7:13-18 (Fed. R.
Civ. P. 30(b)(6) Notice). And Laurie Anderson, GoDaddy’s Fed. R. Civ. P. 30(b)(6) witness on
the topic of the domain forwarding service GoDaddy provided for the Disputed Domains,
testified that she was not even aware if “the Uniform Domain Name Dispute Resolution policy
[UDRP] governs Go Daddy’s conduct with respect to its domain name forwarding service.”
OPPAPP000014, 6 (Anderson at 73:20-23; 21:14-22).
Regardless, however, of what GoDaddy claims its intent was, the undisputed fact is that
“GoDaddy took no action on Petronas’s trademark claims other than (i) providing Petronas with
information to assist it in seeking a transfer order and (ii) locking each domain.” Motion at
14:18-22. And rather than establishing that GoDaddy “believed and had reasonable grounds to
believe that the use of the domain name was a fair use or otherwise lawful,” the undisputed facts
establish that the opposite was true. Jessica Hanyen, GoDaddy’s Fed. R. Civ. P. 30(b)(6) witness
on “GoDaddy’s trademark dispute practices,” testified that, even though GoDaddy’s policy may
call for it to ignore a claim like Petronas’s, “there could be something that would be identified by
the hosting company as trademark infringement.” OPPAPP000070 (Hanyen 10/12/2011 Depo.
at 19:10-19).
And rather than “having reasonable grounds to believe” that the use of the Disputed
Domains was “fair use or otherwise lawful,” Ms. Hanyen testified that GoDaddy’s standard
operating procedure and policy would have been to ignore evidence showing that the use was
unlawful:

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Q. In evaluating the complaint for petronastowers.net, GoDaddy wouldn’t have
considered that the domain name petronastower.net had been ordered transferred
by a court?
A. No, because it would have been the same thing where we would have
followed our standard operating procedure.

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Q. And it wouldn’t have mattered that the domain name petronastower.net was
transferred by a court because the court found trademark infringement?

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A. No.

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MR. LANSKY: Object to the form.

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BY MR. CLARK:
Q. And it wouldn’t matter that the petronastower.net domain name listed the
same registrant?

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MR. LANSKY: Object to the form.

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THE WITNESS: No.

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BY MR. CLARK:
Q. And that it was forwarding to the same website?

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MR. LANSKY: Object to the form.
THE WITNESS: No.
OPPAPP000073 (Hanyen 10/12/2011 Depo. at 28:2-25).

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According to Ms. Hanyen, despite the foregoing, GoDaddy did not do anything to
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determine whether the website to which the Disputed Domains were being forwarded was
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committing trademark infringement—even after the first Disputed Domain had been transferred
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to Petronas by this Court. OPPAPP000074 -75(Hanyen 10/12/2011 Depo. at 30:9-31:7). As
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such, the “catch-all” factor in the ACPA supports, rather than negates, a finding that GoDaddy
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acted with a “bad faith intent to profit” because it shows that GoDaddy did not have “reasonable
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grounds to believe” that its use of the Disputed Domains was “fair use or otherwise lawful.”
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3.

GoDaddy Continued To Provide Its Domain Name Forwarding
Service Because Of Customer Demand

The weakness of GoDaddy’s motion with respect to “bad faith intent” is well illustrated

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they are “generally inapplicable to registrars.” 15 U.S.C. § 1125(d)(1)(B)(i); Motion at 14:7

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(emphasis added). Factor “(V),” however, is particularly probative because the undisputed facts
establish GoDaddy’s “intent to divert customers from the mark owner’s online location to a site
accessible under the domain name that could harm the goodwill represented by the mark, either
for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood
of confusion as to the source, sponsorship, affiliation, or endorsement of the site.” 15 U.S.C. §
1125(d)(1)(B)(i)(V).
Here, it is undisputed that GoDaddy’s domain name registration and hosting customers
specifically requested the type of domain name forwarding service that GoDaddy provided for
the Disputed Domains and was the reason GoDaddy provided it. According to GoDaddy’s
Development Manager, Jeff Munson, who wrote the code for GoDaddy’s domain name
forwarding service, GoDaddy started providing the specific type of domain name forwarding that
it provided for the Disputed Domains—called a “301 redirect”—in response customer requests
“sometime in 2007, 2008.” OPPAPP000082 (Munson Depo. at 15: 2-18.).
GoDaddy understood its customers wanted the 301 redirect forwarding because it not
only diverts Internet traffic from one domain name to a website at another domain name but also
because it increases, or “optimizes,” the search engine “rank” of the destination website based on
the volume of Internet traffic diverted from the original domain name. According to Mr.
Munson, “the main reason why customers were requesting it [the 301 redirect function for
GoDaddy’s domain name forwarding service] is because it also tells search engines to, you
know, your Google spider and your, whatever, Yahoo spider, to go into that new location and to
update the links . . . A 301 is better for search engine optimization.” OPPAPP000082 (Munson
Depo. at 15: 4-16.). As John Roling, GoDaddy’s Software Development Manager responsible
for its domain name forwarding system, explains in his declaration, the use of the 301 redirect
positively “affect[s] the rank of the website [to which a domain name is forwarded] in search
engines like Google or Yahoo because Internet traffic routed to each individual website would . .
. be recognized as flowing to the same website.” Roling Decl. ¶ 14. Put another way,
GoDaddy’s 301 redirect forwarding service provides “search engine optimization” by allowing

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its customers to increase the “rank” of a website by registering domain names with large
amounts of Internet traffic and using GoDaddy’s 301 redirect forwarding service to direct that
Internet traffic to the website. As Mr. Munson testified, “a 301 is better for search engine
optimization. So we had customers asking if we could implement 301 redirects for us. So we
responded to that request and added that functionality.” OPPAPP000082 (Munson Depo. at 15:
4-16.).
Had GoDaddy stopped providing domain name forwarding for the Disputed Domains
because of Petronas’s complaints of cybersquatting, GoDaddy would have had to stop applying
its “standard policy and procedure” of ignoring trademark complaints directed to its domain
name forwarding service. As a result, GoDaddy would have been unable to provide the 301
redirect forwarding service whenever that feature was the basis of a trademark complaint. And
because domain names incorporating well known trademarks—like “petronastower.net” and
“petronastowers.net”—logically generate larger amounts of Internet traffic, GoDaddy would
have risked losing a substantial number of customers using its 301 redirect forwarding service.
4.

GoDaddy Intended To Profit From Petronas’s Marks By Establishing
Its Immunity From Liability For Its Conduct Concerning The
Disputed Domains

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In its motion, GoDaddy reveals for the first time that it “provides forwarding services for

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8.2 million domain names under its management” and has done so “since 2002 or before.”

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Motion at 7:3-4. GoDaddy also admits that “[i]t currently receives notice of more than a

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thousand trademark claims every year . . . and that number is steadily increasing.” Motion at

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19:18-20. And GoDaddy admits that, in refusing to stop providing its domain name forwarding

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service for the Disputed Domains, “GoDaddy followed its standard policies and procedures and

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treated Petronas’s claim the same as it would treat any other such claim.” Motion at 15:23-25. It

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is thus reasonable to infer that GoDaddy’s conduct which forms the basis for Petronas’s claims

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in this case is the same as GoDaddy’s conduct with respect to as many as 9,000 other domain

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names over the past nine years. And because 15 U.S.C. § 1117(d) provides statutory damages

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for cybersquatting of “not less than $1,000 and not more than $100,000 per domain name,”
GoDaddy’s exposure to statutory damages alone should it concede or be found liable for
cybersquatting based on its conduct with respect to the Disputed Domains would potentially be
between $9,000,000 and $900,000,000.
Even if one rejects the reasonable inference of 9,000 domains, GoDaddy’s own expert,
Mr. Michael Palage, Esq., states in his declaration that unless GoDaddy is “shield[ed] . . . from
liability in cybersquatting disputes like this one [brought by Petronas],” “GoDaddy could be
expected to be challenged in excess of 1,100 lawsuits.” Palage Decl. ¶ 84 at 21:2-6. Thus, under
Mr. Palage’s analysis, GoDaddy’s exposure for cybersquatting would be at least between
$1,100,000 and $110,000,000 for statutory damages alone. As Mr. Palage explains, “granting
the relief requested by Petronas—actual, treble or statutory damages, plus an attorney fee award,
based on the conduct exhibited by GoDaddy in this dispute” would have “a direct and
detrimental impact on a multi-billion dollar domain name industry [including GoDaddy]” that
would be “unscalable and unduly burdensome.” Palage Decl. ¶ 17.
Of course, Mr. Palage’s opinion assumes that there is a basis for “actual, treble or
statutory damages”—in other words, that GoDaddy has been providing (and will continue to
provide) its domain name forwarding service to customers who use it to commit trademark
infringement. Significantly, the undisputed evidence establishes a sound basis for this
assumption—and GoDaddy’s awareness of it. Jessica Hanyen, GoDaddy’s Domain Services
Supervisor responsible for handling trademark claims, testified in her deposition that for the
trademark claims that GoDaddy actually has investigated (what it calls “actionable claims”),
GoDaddy cancelled or suspended “a majority, vast majority” of the customer accounts that were
the subject of such claims. OPPAPP000076 (Hanyen 10/12/2011 at 51: 2-18).
In addition, for the accounts that GoDaddy actually cancelled or suspended for trademark
infringement, it provided a “counter-notification” policy that allowed a GoDaddy customer
whose account has been cancelled or suspended to provide information demonstrating that it was
not committing trademark infringement. Id. at 51:19-52:7. Yet despite offering this “counter-

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notification” policy, the number of GoDaddy customers that actually dispute the claims of
trademark infringement against them is “extremely low.” Id. 52:8-11. As such, not only does
the undisputed evidence point to GoDaddy’s substantial monetary exposure, it also establishes
GoDaddy’s knowledge that the “vast majority” of the complaints of trademark infringement like
the ones it received from Petronas are valid.
III.

GODADDY WAS NOT ACTING AS A REGISTRAR PERFORMING THE
REGISTRATION OR MAINTENCE OF THE DISPUTED DOMAIN NAMES
GoDaddy is not shielded from liability for direct or contributory cybersquatting in this

case under either the ACPA or case law.
The ACPA states that “[a] domain name registrar, a domain name registry, or other
domain name registration authority shall not be liable for damages under this section for the
registration or maintenance of a domain name for another absent a showing of bad faith intent to
profit from such registration or maintenance.” 15 U.S.C. § 1114(2)(D)(iii). As an initial matter,
GoDaddy does not allege that there is insufficient evidence to find that it acted with a “bad faith
intent to profit from [the] registration or maintenance” of the Disputed Domains. Nor could it in
light of the evidence set forth above regarding its bad faith intent to profit from Petronas’s mark
and the undisputed fact that it actually collected fees from the registrant in connection with the
Disputed Domains.
Moreover, in the legislative history of the ACPA, Congress made clear that this section
was intended to “limit[] the secondary liability of domain name registrars and registries for the
act of registration of a domain name.” OPPAPP000093 (Senate Report) (emphasis added).
Courts applying this “safe harbor” provision have unanimously held that it is limited to its plain
language and, as such, domain name registrars are only “granted immunity for registering or
maintaining a domain name.” Baidu, Inc. v. Registration.com, Inc., 760 F. Supp.2d 312, 320
(S.D.N.Y. 2010) (defendant registrar “was not registering or maintaining a domain name . . .
[i]t’s purportedly wrongful actions occurred long after the registration of Baidu’s domain
name.”); Solid Host, 652 F. Supp.2d at 1105 (the “ACPA provides safe a harbors for a registrar

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in limited circumstances,” namely, “when it acts as a registrar, i.e., when it accepts registrations
for domain names from customers.”); Transamerica, 672 F. Supp.2d at 1365 (ACPA “immunity
applied only when the registrar is acting as a registrar.”) citing Dell Inc. v. BelgiumDomainsLLC,
2007 WL 6862342 *5 (S.D. Fla. 2007) and Lockheed II, 141 F. Supp.2d at 654-55; Verizon
California, Inc. v. OnlineNIC, Inc., 647 F. Supp.2d 1110, 1126 (N.D. Cal. 2009) (“[Defendant]
OnlineNIC was both the registrant and the registrar of the 663 domain names that are identical or
confusingly similar to Verizon's marks. As such, OnlineNIC does not qualify for protection
under the Anticybersquatting Consumer Protection Act's (“ACPA”) safe harbor provision, which
exempts a domain name registrar from liability resulting from its registration of domain names
for others where the registrar is acting in a purely passive capacity. 15 U.S.C. § 1114(2)(D)(iii).”
Here, GoDaddy does not contend that it performed the “registration” of the disputed
domain names. Instead, GoDaddy contends that it acted “as a registrar” by “providing
forwarding services and maintaining the disputed domain names.” Motion at 21:5-6. Tellingly,
GoDaddy cites to no facts in support of this contention. And the undisputed facts in the record
show that the opposite is true. As an initial matter, however, GoDaddy’s reference to
“maintaining the disputed domain names” is curious—and irrelevant—because nowhere does
Petronas base its claims against GoDaddy on activity that could be considered “maintenance.”
Moreover, GoDaddy does not specify what relevant conduct it believes is maintenance and
neither its expert nor any of its declarants point to anything they would characterize as
“maintenance” of the domain names. In fact, the only information in the record regarding what
actions of GoDaddy could be considered maintenance of the Disputed Domains is in the
declarations of Petronas’s experts, and none of it forms the basis for GoDaddy’s liability in this
case. OPPAPP000189 (Fitzsimmons Decl.); OPPAPP001603 (Dam Decl.).
As for GoDaddy’s contention that it acted “as a registrar” by providing “forwarding
services,” the undisputed facts set forth in Petronas’s motion for partial summary judgment (Doc.
No. 120 and incorporated herein) show overwhelmingly that this is not true. In addition, both of
Petronas’s experts state in their declarations their unequivocal opinion that GoDaddy was not

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acting as a registrar by providing its domain name forwarding services for the Disputed
Domains. As Mr. Kevin Fitzsimmons states, “[i]n my opinion, domain name forwarding and
routing cannot be considered part of domain name registration services generally or the domain
name services offered by GoDaddy.” OPPAPP000193-194. As he explains, “[t]he 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 Name Server.” Id. Moreover, “[a] domain
name registrar can perform all of the functions of domain name registration and maintenance
without owning or operating an Authoritative Domain Name Server for the domain name for
which it is the registrar.” Id.
Likewise, Petronas’s expert Tina Dam states
Godaddy offers their users free services under their domain management control
panel, such as the forwarding or redirection mechanism. The registrant used that
mechanism to forward or redirect specific domains to other domains that hosted
pornographic content. The forwarding or redirection service is an added service
typically provided by registrars to its customers. In my opinion, such service is
separate to that of domain name registration.
OPPAPP001607-608 (Dam Decl.).
Unlike GoDaddy’s expert, Petronas’s experts base their opinions on numerous

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confidential technical documents produced by GoDaddy, GoDaddy’s public documents

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describing its domain name forwarding service, and non-confidential industry documents

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describing in detail the technical standards covering domain name forwarding, domain name

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resolution, and domain name registration, among other things. See, for example,

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OPPAPP000193 (Fitzsimmons Decl.); OPPAPP001607 (Dam Report). Mr. Palage, by contrast,

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admitted in his deposition that he did not review any GoDaddy technical documents, including

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any describing its domain name forwarding service in forming his opinion. OPPAPP003151-52

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(Palage Depo. 49:5-51:7). Similarly, in his declaration in support of GoDaddy’s motion. Mr.

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at issue, and instead states only that “I familiarized myself with the issues in this case by
reviewing . . . GoDaddy’s website.”1 Palage Decl. at 3:10-28.

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In addition to lacking any bases as to GoDaddy’s domain name forwarding service, Mr.
Palage’s opinion also does not establish that GoDaddy was acting as a “registrar” providing
domain name “registration” for the Disputed Domains. Instead, Mr. Palage’s opinion is simply
that “the services provided GoDaddy in connection with the domain names petronastower.net
and petronastowers.net are consistent with core registrar services routinely provided by all the
leading registrars.” Palage Decl. at 4:10-12. This opinion does not establish, however, that
GoDaddy’s conduct in this case falls within the ACPA safe harbor for registrars that perform
“the registration and maintenance of a domain name.” Nowhere in the ACPA, its legislative
history, or the cases applying it is there any authority for the proposition that “the registration
and maintenance of a domain name” in the ACPA means “core registrar services routinely
provided by all leading registrars.” To the contrary, as set forth in the cases and legislative
history cited above, the ACPA safe harbor for registrars does not apply to any conduct of a
registrar except for “the act of registration of a domain name.” OPPAPP000093. Although it is
entirely possible that, as GoDaddy and Mr. Palage contend, “forwarding is a service almost
universally offered by registrars to registrants as part of the registration service,” it is simply
irrelevant to the scope of the ACPA safe harbor for registrars.

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Besides the ACPA, GoDaddy claims that it is shielded from liability because its
forwarding service “is simply a form of routing” that is “essentially the same function that the
Court in Lockheed II concluded would not subject a registry to liability.” Motion at 21:26-25
(emphasis added). Here, again, however, GoDaddy is wrong both factually and legally. First, as

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The weakness of the support for Mr. Palage’s opinions is aptly demonstrated by his review
of GoDaddy’s Motion to Dismiss First Amended Complaint but not Petronas’s Opposition to
that motion. Palage Decl. at 3:13-14.

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the underlining in the preceding citation to GoDaddy’s motion indicates, the Lockheed II case
dealt with the conduct of defendant Network Solutions, Inc. (“NSI”) in 2000-2001 when it was
“one of more than one hundred registrars of domain names [and] also perform[ed] the functions
of a registry.” Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp.2d 648, 650 (N.D.
Tex. 2001) (emphasis added) (Lockheed II). The Court found that as a registry, NSI “maintains a
directory linking domain names with IP numbers of domain name servers. Domain name servers
connect domain names with other internet computers.” Id. Because NSI was both the registry
and the registrar for purposes of the decision in Lockheed II, and because it performed any
“routing” identified in the Lockheed II opinion by virtue of its function as a registry, the
Lockheed II case is completely inapplicable to any “routing” performed by GoDaddy with its
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GoDaddy’s reliance on the Ninth Circuit’s opinion the Lockheed I case is no more
availing for a number of reasons. Lockheed, 194 F.3d at 984 (Lockheed I). First, as made clear
by the opinion of the district court in that case, the defendant in Lockheed I, again Networks
Solutions, Inc. or “NSI,” served as both the registrar and registry at the times relevant to the
opinion (1996-97): “NSI performs two functions in the domain name system. First, it screens
domain name applications against its registry to prevent repeated registrations of the same name.
Second, it maintains a directory linking domain names with the IP numbers of domain name
servers.” Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 953 (C.D. Cal.
1997).
Second, as also made clear by the district court, NSI did nothing more than register the
domain names at issue: “After a domain name is registered, NSI’s involvement is over. NSI is
not part of the process of linking domain names with potentially infringing resources such as
Web sites.” Id. at 961-62. The undisputed fact that GoDaddy used its name servers to provide
its domain name forwarding service linking the Disputed Domains with the infringing
pornographic website makes the Lockheed I decision unmistakably distinct. Id. at 953 (“The

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domain name servers, which are outside of NSI's control, connect domain names with Internet
resources such as Web sites and e-mail systems.”).

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Third, the following language in the Ninth Circuit’s Lockheed I opinion does not expand
the definition of what constitutes “registration” by a registrar to include “routing.” Instead, the
Ninth Circuit’s references to “routing” refer to the conduct of defendant NSI as the registry for
the domains at issue:

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The case at bench involves a fact pattern squarely on the “service” side of the
product/service distinction suggested by Inwood Lab and its offspring. All
evidence in the record indicates that NSI’s role differs little from that of the
United States Postal Service: when an Internet user enters a domain-name
combination, NSI translates the domain-name combination to the registrant’s IP
Address and routes the information or command to the corresponding computer.
Although NSI’s routing service is only available to a registrant who has paid
NSI’s fee, NSI does not supply the domain-name combination any more than the
Postal Service supplies a street address by performing the routine service of
routing mail. As the district court correctly observed,

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Where 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 name on a web site or other Internet form
of communication in connection with goods or services.... NSI’s
involvement with the use of domain names does not extend beyond
registration.

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985 F. Supp. at 958.
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Unlike a registry such as NSI, a domain name registrar like GoDaddy does not maintain a
“registry” or “database” that it would use to translate a “domain name combination to the
Registrant’s IP Address.” Baidu, 760 F. Supp.2d at 320 citing Solid Host, 652 F. Supp.2d 1105
(“a registrar acts as a registrar when it accepts registrations for domain names from customers.”).
As such, to the extent the Ninth Circuit’s opinion in Lockheed I establishes a safe harbor for
“routing,” that safe is limited to the conduct of a registry and it does not apply to a registrar like
GoDaddy.

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IV.

THE PETRONAS TRADEMARK REGISTRATION SHOULD NOT BE
CANCELLED

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A.

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GoDaddy Lacks Standing To Seek Cancellation Of The Petronas
Registration

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The trademark cancellation statute, 15 U.S.C. §1064, limits standing by stating that “a
petition to cancel a registration of a mark . . . may . . . be filed by any person who believes that
he is or will be damaged by the registration of a mark.” It is well settled that to establish
standing under 15 U.S.C. § 1064, “a petitioner must show a real and rational basis for his belief
that he would be damaged by the registration sought to be cancelled, stemming from an actual
commercial or pecuniary interest in his own mark.” Star-Kist Foods, Inc. v. P.J. Rhodes & Co.,
735 F.2d 346, 349 (9th Cir. 1984) (emphasis added) (noting that “[e]xamples of what courts have
countenanced as reasonable bases are: an assertion of a likelihood of confusion between the
petitioner’s mark and the registered mark at issue . . . or a rejection of an application during
prosecution.” (citations omitted)). Thus, “[w]hen a petitioner has no right to use a name shown
in a registered trademark of another party, that petitioner has no standing to seek cancellation of
the trademark.” General Healthcare Limited v. Qashat, 254 F. Supp.2d 193, 204 (D. Mass.
2003) (citing In Re Houbigant, Inc., 914 F. Supp. 997, 1002 (S.D.N.Y. 1996)).
Here, GoDaddy admits that it does not have “any commercial interest in any Petronas
trademark.” OPPAPP000067 (Hanyen Depo. (10/12/2011) at 8:11-23). GoDaddy also
specifically pleads, in paragraph 93 of its amended answer, that “GoDaddy admits that it does
not claim ownership in the Petronas trademark.” OPPAPP003016 (Amended Answer (Doc. No.
106) ¶93). In addition, GoDaddy denies that it “used the ‘petronastower.net’ and
‘petronastowers.net’ domain names.” (Amended Complaint (Doc. No. 69) ¶¶63-65);
OPPAPP003014 (Amended Answer (Doc. No. 106) ¶¶63-65).
By failing to offer any evidence of any use, right, or interest that has been or would be
damaged by the continued registration of the Petronas trademark, GoDaddy has failed to
establish the “real interest” required to establish standing to petition for cancellation. “The case
law establishes ‘that when a plaintiff has no right to use a name shown in a registered trademark
of a defendant, that plaintiff has no standing to seek cancellation of the trademark.’” Houbigant,
914 F. Supp. at 1002. As such, avoiding litigation for infringement of a registered trademark has
long been rejected as a “real interest” that would confer standing to petition for the cancellation

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of a trademark registration. “[I]t is well settled . . . that the mere threat of a suit for infringement
and/or the filing and litigation of an opposition proceeding does not, per se, constitute damage
within the meaning of Section 13 and 14 of the Statute.” Yard-Man, Inc. v. Getz Exterminators,
Inc., 157 U.S.P.Q. 100, 1968 WL 8094 (T.T.A.B. 1968); see also McCarthy J., McCarthy on
Trademarks and Unfair Competition, §20:12 (2010) (“No ‘damage’ results from infringement
suit against opposer.”). As the predecessor court to the Federal Circuit explained, “while a
registration of the trademark at issue may give applicant some tactical advantages in other
litigation between the parties, we do not agree that this constitutes ‘damage’ to appellant in the
sense contemplated by Sec. 13 of the Lanham Act (15 U.S.C. § 1064).” Morton Foods, Inc. v.
Frito Co., 50 C.C.P.A. 1105 (Ct. of Customs and Pat. Appeals 1963) (holding, “in view of
infringement action against opposer based in part on the unregistered mark,” no “damage” would
arise out of the “registration of the mark by reason of the advantages that would accrue to
applicant as plaintiff in the infringement suit.”).
B.

Even If GoDaddy Had Standing, There Is No Evidence Of Abandonment

To show abandonment by nonuse, the party claiming abandonment must prove both the
trademark owner’s (1) “discontinuance of trademark use” and (2) “intent not to resume such
use.” Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931, 935 (9th
Cir.2006) (citing 15 U.S.C. § 1127). “Federal registration of a trademark ‘constitutes prima facie
evidence of the validity of the registered mark and of [the registrant’s] exclusive right to use the
mark’ in commerce.” Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 755 (9th Cir.2006); see
also Coca–Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254 (9th Cir.1982) (noting, “[f]ederal
registration of a trademark endows it with a strong presumption of validity.”). A registered mark
can only be abandoned under the Lanham Act when “its use in commerce is discontinued with
intent not to resume use.” See 15 U.S.C. § 1127. “The presumption places a burden of
production on the party contesting abandonment.” Emergency One, Inc. v. Am. FireEagle Ltd.,
228 F.3d 531, 535–37 (4th Cir.2000). If the party alleging abandonment establishes a prima

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facie case of abandonment by showing a three-year period of non-use, then “a rebuttable
presumption of abandonment is created.” Abdul–Jabbar v. Gen. Motors Corp., 85 F.3d 407, 411
(9th Cir.1996); Star–Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1396 (9th Cir.1985).
“Since abandonment results in a forfeiture of rights, [ ] courts are reluctant to find an
abandonment.” 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §
17.12 at 17–20 (4th ed. 2008); see also Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc.,
304 F.3d 1167, 1175 (11th Cir. 2002) (“Because a finding of abandonment works an involuntary
forfeiture of rights, federal courts uniformly agree that defendants asserting an abandonment
defense face a ‘stringent,’ ‘heavy,’ or ‘strict burden of proof.’”). Thus, “the party asserting
abandonment, is required to ‘strictly prove’ its claim.” Electro Source, 458 F.3d at 935 (“Even a
single instance of use is sufficient against a claim of abandonment of a mark if such use is made
in good faith.”). The Ninth Circuit has noted that this “strictly prove” language is akin to the
“clear and convincing evidence” standard. Id.
Here, GoDaddy has failed to offer any evidence that would show either (1) the
“discontinuance of trademark use” and (2) “intent not to resume such use” with respect to the
Petronas trademark. As a result, GoDaddy cannot establish a prima facie case of abandonment
and Petronas has “no obligation or burden to rebut [GoDaddy’s] naked unsupported assertion of
abandonment.” Bellagio Jewelry, Inc. v. Croton Watch Co., Inc., 2008 WL 3905895, *5 (C.D.
Cal. 2008) (although “it may be difficult to present evidence of nonuse, because this is analogous
to producing negative evidence, [n]onethleless, Croton [defendant] must still provide at least
some support for its assertion that Plaintiffs abandoned their mark.” (emphasis original)).
And even if GoDaddy had produced any evidence with which it could meet its burden of
production, there can be no dispute that the Petronas trademark has not been abandoned. The
declaration filed by Petronas in the U.S. Trademark Office in connection with Registration No.
2,969,707 confirms that its trademark is in use in commerce in the United States.
OPPAPP003025 (Khairuddin Decl. 11/03/2011). The documents filed with this declaration
establish that the mark was used in commerce in the United States beginning within the first two

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years of registration and up to the present. Id. The U.S. Trademark office has accepted these
documents as sufficient to support the use in commerce of the word-mark Petronas in
Registration No. 2,932,662. OPPAPP003057 (U.S. Trademark Office Acceptance of Declaration
Under Section 8).
In addition to the documents submitted to the U.S. Trademark Office, Petronas has
produced numerous documents and provided deposition testimony in this case proving its use of
its trademark in commerce in connection with goods in the registration. OPPAPP003126-40
(Suat Depo. at 136:22-140:13); OPPAPP003364-3484 (Suat Depo. Exs. 31, 32, and 33). These
include documents associated with the sale of goods such as liquid natural gas and crude oil
shipped in bulk and thus satisfy the “affixation” requirement because other methods of
placement in are “impracticable.” OPPAPP003122 (Suat Depo. 89:13-21); 15 U.S.C. § 1127
(“affixation” requirement met by placement of mark, “[i]f nature of the goods makes any of the
[other enumerated] methods of placement impracticable, on documents associated with the goods
or their sale.”); A&H Trans., Inc. v. Save Way Stations, Inc., 115 U.S.P.Q. 251,135 A.2d 289,
335 (MD. 1957) (“Putting the name on the pumps from which gasoline is dispensed is regarded
as equivalent to affixing the name to the goods.” citing Restatement, Torts, §719 Comment b.); 3
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 17.12 at 17–20 (4th
ed. 2008) (“The 1988 Trademark Law Revision Act amended §45 of the Lanham Act so that
where the nature of the goods makes placement of the marks on labels ‘impracticable,’ the use of
the mark on ‘documents associated with the goods or their sale’ will suffice. For example, the
mark can now be deemed to be in ‘use’ on bulk goods such as grain or goods shipped in tank
cars, such as petroleum and milk, if the mark appears on documents associated with the
shipment.”).
C.

GoDaddy Points To No Evidence That Would Support Cancellation Under
Section 44(e)

GoDaddy offers no authority that would support its apparent request that the Court cancel
the entire Petronas registration where, as GoDaddy acknowledges, the registration does not

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“exceed the scope” of the underlying registration for a large number of goods, including an entire
class of goods (Class 11). See Slafsky Decl. Ex. 8. And even if it were not undisputed that a
majority of the goods identified in the registration were supported by the underlying registration,
there is at least a question of fact as to whether the goods identified in the registration do, in fact,
exceed the scope of the underlying registrations. For example, GoDaddy claims that the
identification of goods such as “gasoline,” “fuel gas,” “fuel oils,” “gas,” “kerosene,” and “oil
gas” in the Petronas registration “exceed the scope” of the identification of goods such as
“petroleum products,” “liquid, gaseous, and solid fuels,” and “petrochemicals” in the original
registrations. Compare Slafsky Decl. Ex. 8 with OPPAPP003133, 3135 (Malaysian
Registrations). And GoDaddy does not even address the fact that the U.S. Trademark Examiner
that examined the Petronas registration specifically requested that the identification of goods in
the registration be amended and approved the identification of goods about which GoDaddy now
complains. APPOPP003304-37 (Registration History). Moreover, the examiner did so with
specific knowledge of the “underlying registrations,” which the examiner had not only reviewed
but had required to be updated, notarized, and re-submitted along with the amended
identification of goods about which GoDaddy now complains.
As such, GoDaddy’s motion to cancel (presumably) the entire Petronas registration based
on Section 44(e) should be denied.

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CONCLUSION
For the reasons set forth above, Petronas respectfully requests that the Court deny
GoDaddy’s motion for summary judgment.
Dated: November 16, 2011

LAW OFFICES OF PERRY R. CLARK

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By:

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