Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 153

DECLARATION of Perry Clark in Opposition to 152 Opposition/Response to Motion, 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 (Part 1 of 3), # 22 Exhibit 20 (Part 2 of 3), # 23 Exhibit 20 (Part 3 of 3))(Related document(s) 152 ) (Clark, Perry) (Filed on 12/9/2011)

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Ex. 5

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CLARK DECL. ISO OPP. SUMMARY JUDGMENT
Case No: 09-CV-5939 PJH

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION
PETROLIAM NASIONAL BERHAD
(PETRONAS),
Plaintiff,
CASE NO. 09-CV-5939PJH
vs.
GODADDY.COM, INC.,
Defendant.
_____________________________/

::: CONFIDENTIAL :::

30(b)(6) DEPOSITION OF JESSICA HANYEN

DATE:

Wednesday, October 12, 2011

TIME:

11:58 a.m.

LOCATION:

BALLARD SPAHR, LLP
1 East Washington Street, Suite 2300
Phoenix, Arizona 85004

REPORTED BY: JANICE HARRINGTON, RPR, CRR, CLR
AZ Certified Court Reporter No. 50844
Registered Professional Reporter
Certified Realtime Reporter
Certified LiveNote Reporter
MBreporting
111 Deerwood Road, Suite 200
San Ramon, California 94583

OPPAPP000062

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::: APPEARANCES :::

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FOR PETROLIAM NASIONAL BERHAD (PETRONAS) PLAINTIFF:
Law Offices of Perry R. Clark
By: Perry R. Clark, Attorney At Law
825 San Antonio Road
Palo Alto, California 94303
[phone]
[e-mail]

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FOR GODADDY.COM, INC., DEFENDANT:
Wilson Sonsini Goodrich & Rosati
By: David L. Lansky, Attorney At Law
650 Page Mill Road
Palo Alto, California 94304-1050
[phone]
[e-mail]:

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OPPAPP000063

Page 3
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::: INDEX OF EXAMINATIONS :::

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EXAMINATION BY:

PAGE

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MR. CLARK
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::: INDEX OF REQUESTS :::
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PAGE

LINE

REQUEST

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None

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OPPAPP000064

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Page 4
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::: INDEX OF EXHIBITS :::

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NUMBER

DESCRIPTION

PAGE

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15.

Document, Bates No. GD-000570-578

15

4

16.

Document, Bates No. GD-000564-566

31

5

17.

Document, Bates No. GD-000567-569

31

6

18.

Document, Bates No. GD-000001-271

60

7

19.

Document, Bates No. GD-002079-2081

68

8

20.

Document, Bates No. GD-001593-1603

69

9

21.

Document, Bates No. GD-001315-001325

83

10

22.

Document, Bates No. GD-001326-1330

84

11

23.

Document, Bates No. GD-001302-1311

85

12

24.

Document, Bates No. GD-001312-1314

87

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OPPAPP000065

Page 5
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JESSICA HANYEN,

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being duly sworn by the Certified Shorthand Reporter

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to tell the truth, the whole truth, and nothing but

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the truth, testified as follows:

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EXAMINATION BY MR. CLARK

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Q.

Good morning.

My name is Perry Clark.

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I'm a lawyer.

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Petroliam Nasional Berhad who I will refer to as

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Petronas.

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I represent the plaintiff in this case

MR. LANSKY:

I'm David Lansky of Wilson

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Sonsini Goodrich & Rosati appearing on behalf of the

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deponent.

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MR. CLARK:

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MR. LANSKY:

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Defendant or -Deponent.

BY MR. CLARK:

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Q.

Can I ask you what your job title is at

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Go Daddy?

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A.

Domain Services Supervisor.

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Q.

Okay.

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responsibilities?

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A.

And what are your job

I supervise the trademark claims on

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hosted websites process and other processes such as

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CCTLDs.

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Q.

What are CCTLDs?

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A.

Country code top level domains.

OPPAPP000066

It's

Page 8
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Q.

Okay.

So if you turn to page 8, there is

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topic 11 is on page 8.

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trademark of Petronas, including when Go Daddy first

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became aware of the foregoing and who at Go Daddy

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became aware of the foregoing."

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A.
Q.

Okay.

Do you see that?

Yes.

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And that topic is, "Any

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9
10
11
12

So when did Go Daddy first become

aware of any trademark of Petronas?
A.

We would have become aware when we

received the complaint.
Q.

Okay.

And that's the complaint related

to petronastower.net?

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A.

Yes.

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Q.

In December 2009?

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A.

Yes.

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Q.

So before that, Go Daddy didn't have any

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knowledge of any Petronas trademark?

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A.

Not to my knowledge.

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Q.

Okay.

Does Go Daddy have any commercial

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interest in any Petronas trademark?

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MR. LANSKY:

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go ahead and answer.

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Object to the form.

THE WITNESS:

No.

BY MR. CLARK:
Q.

Does Go Daddy have any commercial

OPPAPP000067

You can

Page 9
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interest in any Petronas trademark registration?

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MR. LANSKY:

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THE WITNESS:

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Object to the form.
No.

BY MR. CLARK:
Q.

Now, prior to December 2009, was Go Daddy

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aware of any use of just the word Petronas in

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connection with any of Go Daddy's activities?

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MR. LANSKY:

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THE WITNESS:

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11

Object to the form.
Not to my knowledge.

BY MR. CLARK:
Q.

Okay.

So did Go Daddy rely in any way on

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Petronas' enforcement or lack thereof of its

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trademark rights in taking any business decisions?

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MR. LANSKY:

THE WITNESS:

Can you rephrase that?

question.

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17

Object to the form of the

BY MR. CLARK:

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Q.

Yeah.

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A.

Thanks.

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Q.

So did Go Daddy base any business

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decisions on any apparent lack of enforcement by

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Petronas of its trademark rights?

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MR. LANSKY:

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THE WITNESS:

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Object to the form.
I don't know how to answer

that because I'm not quite sure what you're in --

OPPAPP000068

Page 10
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BY MR. CLARK:
Q.

Okay.

So I understand that Go Daddy is

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alleging that Petronas failed to timely enforce its

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trademark rights.

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of any business decision or business action taken by

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Go Daddy based on that alleged inaction?

And I'm wondering if you're aware

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MR. LANSKY:

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THE WITNESS:

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10
11
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Object to the form.
Not that I'm aware of.

BY MR. CLARK:
Q.

Okay.

So when Go Daddy became aware of

Petronas' trademark, what did it do?
A.

In that case when we evaluated it,

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because the website content wasn't hosted with us

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from a trademark claims perspective, we didn't take

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any action.

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hosted and also advise that it would be appropriate

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to direct that type of complaint towards the hosting

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provider to have it addressed.

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received in regard to an arbitration going on or a

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court case going on that would be appropriate for

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domain disputes to be involved at that time.

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Q.

What we did was advise that it wasn't

Okay.

There wasn't anything

And so the Petronas notification

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of trademark infringement regarding petronastower.net

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was handled according to Go Daddy's standard policy;

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is that correct?

OPPAPP000069

Page 19
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regarding websites that Go Daddy determines are not

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hosted by Go Daddy, Go Daddy doesn't investigate

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whether or not there is identifiable trademark

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infringement; is that correct?

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6

MR. LANSKY:

Object to the form.

Asked

and answered.

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THE WITNESS:

Since it's not actionable,

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we don't make a determination.

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BY MR. CLARK:

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Q.

Okay.

So if a website is not hosted at

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Go Daddy, there very well may be trademark

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infringement; is that correct?

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MR. LANSKY:

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THE WITNESS:

Object to the form.
There could be something

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that would be identified by the hosting company as

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trademark infringement, but we don't make a

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determination as to whether or not that it exists.

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We simply give them the proper channels to pursue the

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issue.

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BY MR. CLARK:

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Q.

Okay.

And do you know why Go Daddy will

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not -- Go Daddy doesn't carry out any of these steps

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regarding trademark infringement if the website is

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not hosted by Go Daddy?

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MR. LANSKY:

Object to the form.

OPPAPP000070

Page 20
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THE WITNESS:

Because we don't have

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control over being able to stop the content when it

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is hosted with us.

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don't have a similar step that we can take with that.

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BY MR. CLARK:

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Q.

Okay.

We can place a suspension.

We

With respect to domain name

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forwarding, could Go Daddy just stop providing the

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domain name forwarding if it determined that there

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was trademark infringement?

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A.

Using the trademark claims process,

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that's not something that we would do because it's

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not going to address the issue of the content itself.

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The content issue has to be directed to the hosting

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provider.

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order or something to that effect, then that would be

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when we can take some action in regard to the domain

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name registration itself.

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Q.

If we're in receipt of a UDRP or a court

But what about for domain name

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forwarding?

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domain name forwarding for a particular domain name?

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A.

Couldn't Go Daddy just stop providing

It's a service so it could be stopped,

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but in the context of trademark claims and what we

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are and are not able to do under our procedures and

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policies, it's not a step that we would take.

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Q.

Okay.

Now, for hosted websites, websites

OPPAPP000071

Page 21
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hosted by Go Daddy, do you have any sense of the

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number of claims of trademark infringement that Go

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Daddy gets in a given year?

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A.

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hosted with us?

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Q.

Uh-huh.

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A.

It varies year by year.

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In reference to ones that are actually

A few hundred

would probably be fair to say.
Q.

Okay.

And how many of those -- roughly

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how many of those does Go Daddy determine that it

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should open a valid trademark claim?

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A.

Of your previous question it was about

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ones that are actually hosted.

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that would be ones that would be ultimately

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actionable.

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Q.

I see.

So the few hundred,

So I'm trying to get a sense of

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the number of claims that you get where Go Daddy does

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determine the content is hosted.

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initial complaints does Go Daddy determine not to

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open a valid trademark claim?

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MR. LANSKY:

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THE WITNESS:

How many of those

Object to the form.
If they provide us a

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complete complaint which is on websites that are

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hosted with us, then we will take action.

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BY MR. CLARK:

OPPAPP000072

Page 28
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A.

Yes.

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Q.

So Go Daddy wouldn't have -- in

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evaluating the complaint for petronastowers.net, Go

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Daddy wouldn't have considered the domain name

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petronastower.net had been ordered transferred by a

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court?

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A.

No, because it would have been the same

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thing where we would have followed our standard

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operating procedure.

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Q.

And it wouldn't have mattered that the

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domain name petronastower.net was transferred by a

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court because the court found trademark infringement?

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A.

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16

No.
MR. LANSKY:

Object to the form.

BY MR. CLARK:
Q.

And it wouldn't matter that the

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petronastower.net domain name listed the same

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registrant?

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MR. LANSKY:

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THE WITNESS:

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Object to the form.
No.

BY MR. CLARK:
Q.

And that it was forwarding to the same

website?

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MR. LANSKY:

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THE WITNESS:

Object to the form.
No.

OPPAPP000073

Page 30
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infringement when it receives complaints regarding

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websites that are not hosted by Go Daddy?

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A.

That's difficult to answer yes or no

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because there's a lot of nots in there.

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that it's our policy to investigate and see if things

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are actionable and that we will take action if we

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can.

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to get assistance.

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I can say

If we can't, we'll give advice as to how to try

Q.

Okay.

If Go Daddy -- well, in the case

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of petronastowers.net, a court found that Go Daddy

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was providing domain name forwarding services to a

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domain name that was infringing Petronas' trademarks.

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Do you understand that?

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MR. LANSKY:

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THE WITNESS:

16
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Object to the form.
Yes.

BY MR. CLARK:
Q.

And in responding to Petronas' complaints

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regarding petronastowers.net, did Go Daddy do

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anything to determine whether or not the website to

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which that domain name was being forwarded was

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committing trademark infringement?

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A.

Not to my knowledge.

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Q.

And for petronastower.net, did Go Daddy

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do anything to determine whether or not the website

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to which that domain name was being forwarded was

OPPAPP000074

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committing trademark infringement?

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A.

Not to my knowledge.

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Q.

Do you know how many complaints a year Go

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Daddy gets regarding trademark infringement for

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domain names for which Go Daddy's offering domain

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name forwarding services?

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A.

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9

No.
(DEPOSITION EXHIBIT 16 WAS MARKED.)

BY MR. CLARK:

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Q.

I'm going to go ahead and mark -- I'm

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going to hand you a document that has been marked

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Hanyen Exhibit 16.

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numbers GD-000564 to 566.

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chance to look at that document, can you tell me what

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it is?

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17

A.

And once you've had a

This is Go Daddy's Trademark and/or

Copyright Infringement Policy.

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It's a document bearing Bates

(DEPOSITION EXHIBIT 17 WAS MARKED.)
BY MR. CLARK:

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Q.

Okay.

I'd like to hand you Exhibit 17

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which is the document bearing Bates numbers GD-00567

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to 569.

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that, can you tell me what that document is?

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And when you've had a chance to look at

A.

This is a different version of the Go

Daddy Trademark and/or Copyright Infringement Policy.

OPPAPP000075

Page 51
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pretty steady.

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Q.

Okay.

And do you have any idea how many

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trademark infringement claims Go Daddy receives each

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year?

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A.

I don't know a specific number, but it is

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in the thousands.

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Q.

And of those claims -- I'm sorry if you

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already told me this, but what's your estimate of how

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many of those relate to hosted accounts?

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A.

Actionable claims are in the hundreds.

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Q.

Okay.

And of the actionable claims, give

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a sense of what percentage of those actually result

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in a hosting account being cancelled or suspended?

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A.

It would be suspended and any actionable

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claim that we get a valid complete complaint for

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we're going to take action on.

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majority.

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number.

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Q.

So a majority, vast

I couldn't really give you a specific

And when you have the -- when there is a

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valid trademark claim for a hosted website, the Go

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Daddy customer has the opportunity to provide a

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counter-notification; is that correct?

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A.

Yes.

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Q.

And can you describe what a

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counter-notification is?

OPPAPP000076

Page 52
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A.

Yes.

Counter-notification is actually on

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Exhibit 16.

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they have to provide 1A through 1D.

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1A through 1D, then in 10 business days if we don't

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receive anything from the complainant to prevent us

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from reinstating the site or removing the suspension,

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then the suspension is removed.

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Q.

And basically what they have to do is

Okay.

If they provide

And do you have a sense of in what

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percentage of the cases where an account is suspended

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the suspension is removed after counter-notification?

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A.

It's extremely low.

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Q.

In implementing this trademark policy for

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hosted content, does it require that Go Daddy

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actually determine whether or not a particular hosted

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website is infringing a trademark?

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A.

Can you clarify that a little?

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Q.

In other words, is what Go Daddy's doing

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under this trademark policy, is it actually looking

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at complaints and determining whether or not there

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actually is infringement or something else?

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MR. LANSKY:

Object to the form.

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THE WITNESS:

We're determining whether

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or not we've got all the elements that we need in

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order to take action.

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actually view the trademark.

We're determining that we can
We're determining that

OPPAPP000077