Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 166

See document 168 for corrected entry.NOTICE by GoDaddy.com, Inc. re 165 Order on Motion for Extension of Time to File, Order on Stipulation Administrative Motion for Entry of Final Judgment on Petronas's Claims and Voluntary Dismissal of Go Daddy's Counterclaim Without Prejudice (Attachments: # 1 Declaration David Lansky Declaration, # 2 Exhibit A to D Lansky Declaration, # 3 Exhibit B to D Lansky Declaration, # 4 Proposed Order)(Lansky, David) (Filed on 1/27/2012) Modified on 1/31/2012 (vlk, COURT STAFF).

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JOHN L. SLAFSKY, State Bar No. 195513
DAVID L. LANSKY, State Bar No. 199952
HOLLIS BETH HIRE, State Bar No. 203651
WILSON SONSINI GOODRICH & ROSATI
PROFESSIONAL CORPORATION
650 Page Mill Road
Palo Alto, CA 94304
Telephone: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

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Attorneys for Defendant / Counterclaimant
GODADDY.COM, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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PETROLIAM NASIONAL BERHAD,

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Plaintiff,

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vs.

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GODADDY.COM, INC.,

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Defendant.

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GODADDY.COM, INC.,
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Counterclaimant,
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vs.
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PETROLIAM NASIONAL BERHAD,
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Counterclaim Defendant.
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ADMIN. MOTION FOR FINAL JUDGMENT AND FOR
DISMISSAL OF COUNTERCLAIM W/O PREJUDICE
Case No. 4:09-cv-05939-PJH

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CASE NO.: 09-CV-5939 PJH
ADMINISTRATIVE MOTION FOR
ENTRY OF FINAL JUDGMENT ON
PETRONAS’S CLAIMS AND
VOLUNTARY DISMISSAL OF GO
DADDY’S COUNTERCLAIM
WITHOUT PREJUDICE

Honorable Phyllis J. Hamilton

Defendant and Counterclaimant GoDaddy.com, Inc. (“Go Daddy”) hereby moves for entry

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of final judgment as to all claims asserted by Plaintiff and Counterclaim Defendant Petroliam

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Nasional Berhad (“Petronas”) in the above-captioned litigation (“Petronas’s claims”), and for

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voluntary dismissal without prejudice of Go Daddy’s counterclaim for cancellation of Petronas’s

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PETRONAS AND DESIGN trademark registration, Reg. No. 2969707 (the “Trademark claim”).

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As discussed with the Court at the January 19, 2012 Case Management Conference, Go Daddy

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maintains that the Court should now allow for trial of the Trademark claim before the Trademark

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Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office. Go Daddy

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previously asserted a substantially identical claim currently pending in an action before the TTAB

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entitled GoDaddy.com, Inc., v. Petroliam Nasional Berhad, No. 92052741 (the “TTAB

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proceeding”). See Exhibit A to the Declaration of David L. Lansky, filed concurrently herewith

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(the “Lansky Decl.”). The TTAB proceeding is suspended in deference to this litigation. Lansky

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Decl., Ex. B.
By way of background, on January 3, 2012, the Court granted Go Daddy’s motion for

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summary judgment as to Petronas’s claims and denied Go Daddy’s motion for summary judgment

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as to the Trademark claim. Accordingly, the only claim now pending in this lawsuit is the

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Trademark claim.1

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At the January 19 Case Management Conference, the parties and the Court discussed

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whether, in view of the dismissal of Petronas’s claims, it would now be most efficient to litigate

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the remainder of the Trademark claim in the TTAB proceeding as opposed to in this Court. Go

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Daddy indicated that it would be willing to go forward with a trial of the Trademark claim before

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the TTAB based on the discovery to date. In particular, Go Daddy suggested that the parties could

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now request that the TTAB lift the current suspension of the TTAB proceeding.2 The Court

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Petronas is reserving its right to appeal the Court’s dismissal of its claims, which are based,
in part, on its federal trademark registration. Accordingly, at this time, Go Daddy is not willing to
withdraw the Trademark claim with prejudice.
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Go Daddy, or preferably the parties together, would file a motion with the TTAB to lift the
stay, making clear that the Court has no plans to try the Trademark claim and that the basis for the
stay is now moot.
ADMIN. MOTION FOR FINAL JUDGMENT AND FOR
DISMISSAL OF COUNTERCLAIM W/O PREJUDICE
Case No. 4:09-cv-05939-PJH

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indicated that it was open to such disposition of the Trademark claim and also stated that if the

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TTAB for some reason declined to lift its suspension, the parties could report back to the Court

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and seek to reschedule trial of the Trademark claim. On January 19, 2012 the Court issued a

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minute order (Dkt. 162) directing the parties to “meet and confer and submit a proposed stipulated

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judgment covering the summary judgment order and either a voluntary dismissal of the

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counterclaim without prejudice or proposed order remanding the case back to the trial board[.]”

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Go Daddy subsequently proposed a series of stipulations and orders, but Petronas has not agreed

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to any them. Lansky Decl., ¶ 6.

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In response to Go Daddy’s proposed stipulation following the Case Management

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Conference, Petronas initially insisted on obtaining “final judgment” it its favor on the Trademark

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claim. Contrary to the discussion at the Case Management Conference, Petronas no longer

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acknowledges that it would be most efficient for the parties to litigate the Trademark claim in the

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TTAB proceeding. Petronas is likewise unwilling to stipulate to Go Daddy’s reservation of the

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right, as suggested by the Court at the Case Management Conference, to seek revival of the

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Trademark claim in this Court in the unlikely event that the TTAB refuses to lift its suspension.

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Under the circumstances of this lawsuit, with a single remaining trademark cancellation

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claim, it clearly would not be efficient to proceed to trial before the Court. A TTAB trial, in

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contrast, is based on submission of documentary evidence and transcripts of trial testimony

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depositions (typically without an oral hearing) and thus can proceed much less expensively and,

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relatively speaking, at the convenience of the parties. Certainly, the TTAB has considerable

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substantive expertise as to claims such as the Trademark claim.

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Under the doctrine of primary jurisdiction, the Court has discretion to remand the

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Trademark claim now to the TTAB, either by dismissing the Trademark claim without prejudice

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(for the purpose of continued prosecution before the TTAB) or staying the lawsuit pending

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disposition of the TTAB proceeding. “If a district court action involves only the issue of whether

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a mark is entitled to registration and if subject matter jurisdiction is available, the doctrine of

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primary jurisdiction might well be applicable. … In such a case the benefits of awaiting the

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decision of the [TTAB] would rarely, if ever, be outweighed by the litigants’ need for prompt
ADMIN. MOTION FOR FINAL JUDGMENT AND FOR
DISMISSAL OF COUNTERCLAIM W/O PREJUDICE
Case No. 4:09-cv-05939-PJH

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adjudication.” Goya Foods, Inc. v. Tropicana Products, Inc., 846 F. 2d. 848 (2nd Cir. 1988). Here

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the Court should exercise its discretion to dismiss the Trademark claim without prejudice,

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allowing Go Daddy to ask the TTAB to lift its suspension and to schedule a trial of the Trademark

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claim. The Court should also allow -- as discussed specifically at the Case Management

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Conference -- for the procedural safeguard of Go Daddy being able to return to this Court in the

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unlikely event the TTAB declines to lift its stay. The alternative of burdening the parties and the

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Court now with a District Court trial of the Trademark claim is inefficient and unnecessary.

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Accordingly, Go Daddy respectfully submits the proposed order filed concurrently
herewith.

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Dated: January 27, 2012

WILSON SONSINI GOODRICH & ROSATI
PROFESSIONAL CORPORATION

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By: /s/ David L. Lansky
JOHN L. SLAFSKY
DAVID L. LANSKY
HOLLIS BETH HIRE
[e-mail]
[e-mail]
[e-mail]

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Attorneys for Defendant and Counterclaimant
GODADDY.COM, INC.

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ADMIN. MOTION FOR FINAL JUDGMENT AND FOR
DISMISSAL OF COUNTERCLAIM W/O PREJUDICE
Case No. 4:09-cv-05939-PJH

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