Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 168

Administrative Motion for Entry of Final Judgment on Petronas's Claims and Voluntary Dismissal of Go Daddy's Counterclaim Without Prejudice re 165 Order on Motion for Extension of Time to File, Order on Stipulation filed by GoDaddy.com, Inc.. Responses due by 2/13/2012. Replies due by 2/21/2012. (Attachments: # 1 Declaration David Lansky Declaration ISO Administrative Motion, # 2 Exhibit A to David Lansky Declaration ISO Administrative Motion, # 3 Exhibit B to David Lansky Declaration ISO Administrative Motion, # 4 Proposed Order)(Lansky, David) (Filed on 1/30/2012) 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,
vs.
PETROLIAM NASIONAL BERHAD,
Counterclaim Defendant.

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LANSKY DECL. ISO 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

DECLARATION OF DAVID L.
LANSKY IN SUPPORT OF
GO DADDY’S 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

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I, David L. Lansky, declare:

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I am an attorney admitted to practice law before this Court, and am Of Counsel at

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the law firm of Wilson Sonsini Goodrich & Rosati, P.C., counsel for Defendant and

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Counterclaimant GoDaddy.com, Inc. (“Go Daddy”). I attended the most recent Case Management

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Conference and have personal knowledge of the facts set forth in this Declaration. I submit this

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declaration in support of Go Daddy’s Administrative Motion for Entry of Final Judgment on

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Petronas’s Claims and Voluntary Dismissal of Go Daddy’s Counterclaim Without Prejudice.

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2.

On January 19, 2012 the parties participated in a Case Management Conference to

discuss the status of the litigation in light of the Court’s January 3, 2012 ruling granting summary

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judgment in favor of Go Daddy on all claims asserted by Petronas (“Petronas’s claims”) and

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denying Go Daddy’s motion for summary judgment as to Go Daddy’s counterclaim. Go Daddy’s

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counterclaim seeks to cancel Petronas’s PETRONAS AND DESIGN trademark registration, U.S.

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trademark registration Reg. No. 2969707 (the “Trademark claim”)1. During the Case

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Management Conference, Go Daddy expressed a willingness to dismiss its Trademark claim

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without prejudice and instead proceed with the prosecution of a substantially identical claim

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currently pending before the United States Patent and Trademark Office, Trademark Trial and

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Appeal Board (“TTAB”), entitled GoDaddy.com, Inc., v. Petroliam Nasional Berhad, No.

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92052741 (the “TTAB proceeding”). A true and correct copy of Go Daddy’s petition in the

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TTAB proceeding is attached hereto as Exhibit A.

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3.

The TTAB proceeding was suspended on June 7, 2011 in deference to this litigation.

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A true and correct copy of the order suspending the TTAB proceeding is attached hereto as

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Exhibit B.

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4.

At the Case Management Conference, Petronas agreed that Go Daddy could dismiss

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the Trademark Claim in this litigation without prejudice and prosecute the remainder of the claim

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in the TTAB proceeding based on the discovery adduced to date. (Petronas does not concede the

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Petronas is reserving its right to appeal the dismissal of its claims, which are based, in part,
on this very trademark registration.

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

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Trademark claim on the merits, though, nor does it concede Go Daddy’s standing to bring the

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Trademark claim). Go Daddy cited the unlikely possibility that the TTAB would for some reason

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not lift the suspension of the TTAB proceeding. In response, the Court indicated that, should the

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TTAB decide not to lift the suspension of the TTAB proceeding, the parties could so inform the

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Court and seek revive the Trademark claim in this Court.

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5.

On January 19, 2012, following the Case Management Conference, the Court issued

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

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stipulated 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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6.

Go Daddy subsequently prepared multiple proposed stipulations to reflect what was

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discussed at the Case Management Conference and to implement the terms of the Court’s January

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19, 2012 minute order. Petronas has not agreed to any of these stipulations. In particular,

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Petronas has not agreed to language concerning the disposition of the Trademark claim. Petronas

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initially insisted on obtaining “final judgment” in its favor on the remainder of the Trademark

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claim but now consents to a dismissal without prejudice. However, Petronas no longer

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acknowledges that it would be more efficient to litigate the Trademark claim in the TTAB

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

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seek to revive the Trademark claim in this Court in the unlikely event the TTAB refuses to lift the

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suspension of the TTAB proceeding.

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I declare under penalty of perjury that the foregoing is true and correct. Executed at Palo
Alto, California, on January 27, 2012.

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/s/ David L. Lansky
David L. Lansky

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

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