Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 169

RESPONSE (re 168 MOTION 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 byPetroliam Nasional Berhad. (Clark, Perry) (Filed on 2/6/2012)

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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),

CASE NO: 09-CV5939 PJH (MEJ)

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Plaintiff,

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OPPOSITION TO ADMINISTRATIVE
MOTION FOR ENTRY OF FINAL
JUDGMENT ON PETRONAS’S
CLAIMS AND VOLUNTARY
DISMISSAL OF GODADDY’S
COUNTERLCAIM WITHOUT
PREJUDICE
(DOC. NO. 166)

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Plaintiff and Counterclaim Defendant Petroliam Nasional Berhad (“Petronas”) hereby

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opposes Defendant and Counterclaimant GoDaddy.com, Inc.’s (“GoDaddy’s”) administrative

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motion for entry of final judgment as to all claims asserted by Petronas and for voluntary

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dismissal without prejudice of GoDaddy’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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vs.

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GODADDY.COM, INC.,

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Defendant.

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Petronas does not oppose—and repeatedly agreed to stipulate to—GoDaddy’s request

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that, “[p]ursuant to Federal Rule of Civil Procedure 41(a)(2), the Court enter[] GoDaddy’s

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voluntary dismissal of the Trademark claim without prejudice.”

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Petronas does, however, oppose GoDaddy’s request that, in addition to GoDaddy’s

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voluntary dismissal of the Trademark claim without prejudice, the Court order that “[s]hould the

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TTAB for any reason decline a request to lift the suspension of the TTAB proceeding, then

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OPP. TO ADMIN. MOTION
CASE NO.: 09-CV-5939 PJH (MEJ)

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GoDaddy may advise this Court within 30 days of such TTAB decision and seek rescheduling
of trial of the Trademark claim before this Court.”

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Petronas opposes this request by GoDaddy because it asks that the Court, on the one
hand, “dismiss” GoDaddy’s Trademark claim while, on the other hand, essentially stay
GoDaddy’s Trademark claim “[s]hould the TTAB for any reason decline a request to lift the
suspension of the TTAB proceeding.” (emphasis added). GoDaddy’s request is inconsistent
with the TTAB’s June 7, 2011 order suspending the TTAB proceeding, which contemplates a
“final disposition of the civil action between the parties, including all appeals.” Specifically,
TTAB’s order states:

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“these proceedings are suspended pending final disposition of the civil action
between the parties, including all appeals. . . . Within twenty days after the final
determination of the civil action, the interested party should notify the Board so
that this case may be called up for appropriate action.

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Lansky Decl. Ex. B (Doc. No. 166-3) at 2-3 (TTAB Suspension Order, June 7, 2011) (emphasis

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original).

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Petronas also opposes GoDaddy’s motion because it is based on several mis-

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characterizations of positions taken by Petronas—one of which needs to be addressed. Namely,

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it is incorrect that “[c]ontrary to the discussion at the Case Management Conference, Petronas

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no longer acknowledges that it would be most efficient for the parties to litigate the Trademark

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claim in the TTAB proceeding.” Mtn. at 2:11-12. Petronas’s position has always been that if

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GoDaddy chooses to dismiss its Trademark claim in the district court, Petronas would rather be

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in the TTAB and seek dismissal of GoDaddy’s Trademark claim there. Petronas has never

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agreed, however, that the TTAB proceeding would be more efficient—indeed, discovery in the

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TTAB has not even closed. Nor has Petronas agreed that it would be more efficient to, in

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essence, stay this district court case pending a decision by the TTAB refusing to proceed with

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GoDaddy’s Trademark claim “for any reason,” including substantive reasons such as that

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GoDaddy lacks standing to bring its Trademark claim or that it lacks any evidence to support its

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claim.

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OPP. TO ADMIN. MOTION
CASE NO.: 09-CV-5939 PJH (MEJ)

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Petronas also does not agree that the TTAB proceeding would be “more efficient” for the
reasons set forth in the TTAB’s order suspending those proceedings (and footnotes 2 and 3 in
particular):

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23 Lansky Decl. Ex. B (Doc. No. 166-3) at 2-3 (TTAB Suspension Order, June 7, 2011).
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OPP. TO ADMIN. MOTION
CASE NO.: 09-CV-5939 PJH (MEJ)

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Accordingly, Petronas respectfully requests that GoDaddy’s administrative motion be
denied.
February 6, 2012

LAW OFFICES OF PERRY R. CLARK

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/S/
PERRY R. CLARK
825 San Antonio Road
Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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Attorney for Petrolaim Nasional Berhad
(PETRONAS)

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OPP. TO ADMIN. MOTION
CASE NO.: 09-CV-5939 PJH (MEJ)