Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 27

ANSWER to Complaint with Jury Demand byGoDaddy.com, Inc.. (Slafsky, John) (Filed on 3/11/2010)

JOHN L. SLAFSKY, State Bar No. 195513 DAVID H. KRAMER, State Bar No. 168452 HOLLIS BETH HIRE, State Bar No. 203651 WILSON SONSINI GOODRICH & ROSATI Professional Corporation 650 Page Mill Road Palo Alto, CA 94304-1050 Telephone: [phone] Facsimile: [phone] jslafsky@wsgr,com [e-mail] [e-mail] Attorneys for Defendant GoDaddy.com, Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA PETROLIAM NASIONAL BERHAD, Plaintiff, V. S GODADDY.COM, INC., Defendant.
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CASE NO: 09-CV-5939 PJH

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ANSWER TO COMPLAINT DEMAND FOR JURY TRIAL

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l9 20 the Complaint of Plaintiff Petroliam Nasional Berhad ("Petronas") as follows:

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Defendant GoDaddy.com, Inc. ("GoDaddy"), by and through its attorneys, hereby answers

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THE PARTIES

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in 23 paragraph 1 of the Complaint and on that basis denies them. 24

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2.

GoDaddy admits the allegations as set forth in paragraph 2 of the Complaint.
JURISDICTION AND VENUE

3.

GoDaddy admits that this action purportedly arises under the Lanham Act and that

27 the Court has subject matter jurisdiction over the claims asserted in the Complaint. GoDaddy

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ANSWER TO COMPLAINT Case No: 09-CV-5939 PJH

acks sufficient knowledge to admit or deny the remaining allegations set forth in paragraph 3 of he Complaint and on that basis denies them. 4.
5.

GoDaddy denies the allegations as set forth in paragraph 4 of the Complaint. GoDaddy denies the allegations as set forth in paragraph 5 of the Complaint. INTRADISTRICT ASSIGNMENT

6.

GoDaddy admits the allegations as set forth in paragraph 6 of the Complaint. FACTUAL ALLEGATIONS

7.

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 7 of the Complaint and on that basis denies them.
8.

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 8 of the Complaint and on that basis denies them.

9.

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 9 of the Complaint and on that basis denies them. lo. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 10 of the Complaint and on that basis denies them. 11. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 11 of the Complaint and on that basis denies them. 12. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 12 of the Complaint and on that basis denies them.
13.

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 13 of the Complaint and on that basis denies them. 14. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 14 of the Complaint and on that basis denies them. 15. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 15 of the Complaint and on that basis denies them.

16.

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 16 of the Complaint and on that basis denies them.

ANSWER TO COMPLAINT Case No: 09-CV-5939 PJH

17.

GoDaddy admits that it was contacted on November 26,2009 concerning the

domain name <petronastower.net>. GoDaddy denies the remaining allegations set forth in paragraph 17 of the Complaint. 18. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 18 of the Complaint and on that basis denies them. 19. GoDaddy admits that it was contacted on December 14,2009 concerning the

domain name <petronastower.net>. GoDaddy denies the remaining allegations set forth in paragraph 19 of the Complaint. 20. GoDaddy admits that it received a Request for Trademark Claims form concerning

the domain name <petronastower.net> on December 16,2009. GoDaddy denies the remaining allegations set forth in paragraph 20 of the Complaint. 21. GoDaddy admits that on December 16,2009 it sent an e-mail message concerning

the domain name <petronastower.net>. GoDaddy denies the remaining allegations set forth in paragraph 21 of the Complaint. 22. GoDaddy denies the allegations as set forth in paragraph 22 of the Complaint, and

notes in particular that the last sentence of this paragraph is incomprehensible. 23. GoDaddy admits the allegations as set forth in paragraph 23 of the Complaint.

COUNT ONE
Cvbersquatting and Contributorv Cybersquatting Under 15 U.S.C. 81125(d)
24.

GoDaddy incorporates by reference its responses to paragraphs 1 through 23,

inclusive, as if fully set forth herein. 25. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 25 of the Complaint and on that basis denies them. 26. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 26 of the Complaint and on that basis denies them.
27.

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 27 of the Complaint and on that basis denies them. 28. GoDaddy denies the allegations as set forth in paragraph 28 of the Complaint. -3ANSWER TO COMPLAINT Case No: 09-CV-5939 PJH
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29.

GoDaddy denies the allegations as set forth in paragraph 29 of the Complaint. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

30.

paragraph 30 of the Complaint and on that basis denies them. 3 1. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 3 1 of the Complaint and on that basis denies them. 32. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 32 of the Complaint and on that basis denies them. 33. GoDaddy denies that it has taken any steps to divert Petronas customers, for

commercial gain or otherwise. GoDaddy lacks sufficient knowledge to admit or deny the remaining allegations paragraph 33 of the Complaint and on that basis denies them. 34. Insofar as the allegations as set forth in paragraph 34 of the Complaint relate to

GoDaddy, GoDaddy denies them. 35. 36.
37.

GoDaddy denies the allegations as set forth in paragraph 35 of the Complaint. GoDaddy denies the allegations as set forth in paragraph 36 of the Complaint. GoDaddy denies the allegations as set forth in paragraph 37 of the Complaint. COUNT TWO

Trademark Infringement and Contributorv Infringement Under 51114(i) 38. GoDaddy incorporates by reference its responses to paragraphs 1 through 37,

inclusive, as through fully set forth herein. 39. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 39 of the Complaint and on that basis denies them.
40.

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 40 of the Complaint and on that basis denies them. 41. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 41 of the Complaint and on that basis denies them. 42. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 42 of the Complaint and on that basis denies them.

-4ANSWER TO COMPLAINT Case No: 09-CV-5939 PJH

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43.

GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 43 of the Complaint and on that basis denies them. 44. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 44 of the Complaint and on that basis denies them. 45. 46. 47. 48. GoDaddy denies the allegations as set forth in paragraph 45 of the Complaint. GoDaddy denies the allegations as set forth in paragraph 46 of the Complaint. GoDaddy denies the allegations as set forth in paragraph 47 of the Complaint. Insofar as the allegations as set forth in paragraph 48 of the Complaint relate to

GoDaddy, GoDaddy denies them. 49. Insofar as the allegations as set forth in paragraph 49 of the Complaint relate to

GoDaddy, GoDaddy denies them, and notes in particular that the reference to "log-used" is incomprehensible. 50. Insofar as the allegations as set forth in paragraph 50 of the Complaint relate to

GoDaddy, GoDaddy denies them.
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52.

GoDaddy denies the allegations as set forth in paragraph 5 1 of the Complaint. GoDaddy denies the allegations as set forth in paragraph 52 of the Complaint. GoDaddy denies the allegations as set forth in paragraph 53 of the Complaint. COUNT THREE False Designation of Origin of the "PETRONAS" Mark

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54.

GoDaddy incorporates by reference its responses to paragraphs 1 through 53,

inclusive, as though fully set forth herein. 55. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 55 of the Complaint and on that basis denies them. 56. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 56 of the Complaint and on that basis denies them. 57. Insofar as the allegations as set forth in paragraph 57 of the Complaint relate to

GoDaddy, GoDaddy denies them.

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58.

Insofar as the allegations as set forth in paragraph 58 of the Complaint relate to

3oDaddy, GoDaddy denies them. GoDaddy lacks sufficient knowledge to admit or deny the -emainingallegations as set forth in paragraph 58 of the Complaint and on that basis denies them. 59. Insofar as the allegations as set forth in paragraph 59 of the Complaint relate to

SoDaddy, GoDaddy denies them. 60. Insofar as the allegations as set forth in paragraph 60 of the Complaint relate to

GoDaddy, GoDaddy denies them. 61. Insofar as the allegations as set forth in paragraph 61 of the Complaint relate to

GoDaddy, GoDaddy denies them. 62. Insofar as the allegations as set forth in paragraph 62 of the Complaint relate to

GoDaddy, GoDaddy denies them. 63. Insofar as the allegations as set forth in paragraph 63 of the Complaint relate to

GoDaddy, GoDaddy denies them. 64. GoDaddy denies the allegations as set forth in paragraph 64 of the Complaint.
COUNT FOUR

Dilution Under 15 U.S.C. 81125(c)
65. GoDaddy incorporates by reference its responses to paragraphs 1 through 64,

inclusive, as though hlly set forth herein. 66. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 66 of the Complaint and on that basis denies them. 67. GoDaddy lacks sufficient knowledge to admit or deny the allegations as set forth in

paragraph 67 of the Complaint and on that basis denies them.
68.

Insofar as the allegations set forth in paragraph 68 of the Complaint relate to

GoDaddy, GoDaddy denies them. 69. Insofar as the allegations set forth in paragraph 69 of the Complaint relate to

GoDaddy, GoDaddy denies them.
70.

Insofar as the allegations set forth in paragraph 70 of the Complaint relate to

GoDaddy, GoDaddy denies them.
ANSWER TO COMPLAINT Case No: 09-CV-5939 PJH

71.

Insofar as the allegations set forth in paragraph 71 of the Complaint relate to

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GoDaddy, GoDaddy denies them. 72. Insofar as the allegations set forth in paragraph 72 of the Complaint relate to

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GoDaddy, GoDaddy denies them. 73. Insofar as the allegations set forth in paragraph 73 of the Complaint relate to

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GoDaddy, GoDaddy denies them. 74. GoDaddy denies the allegations as set forth in paragraph 74 of the Complaint. COUNT FIVE Trademark Infrin~ement Under California Business & Professions Code 614320 and California Common Law 75. GoDaddy incorporates by reference its responses to paragraphs 1 through 74,

inclusive, as though fully set forth herein. 76. 77. GoDaddy denies the allegations as set forth in paragraph 76 of the Complaint. Insofar as the allegations as set forth in paragraph 77 of the Complaint relate to

GoDaddy, GoDaddy denies them. 78. Insofar as the allegations as set forth in paragraph 78 of the Complaint relate to

GoDaddy, GoDaddy denies them. 79. Insofar as the allegations as set forth in paragraph 79 of the Complaint relate to

GoDaddy, GoDaddy denies them. 80. Insofar as the allegations as set forth in paragraph 80 of the Complaint relate to

GoDaddy, GoDaddy denies them.

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Insofar as the allegations as set forth in paragraph 8 1 of the Complaint relate to

GoDaddy, GoDaddy denies them. COUNT SIX Unfair Competition Under California Business & Professions Code 817200 and California Common Law 82. GoDaddy incorporates by reference its responses to paragraphs 1 through 8 1,

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inclusive, as though fully set forth herein.
83.

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GoDaddy denies the allegations as set forth in paragraphs 83 of the Complaint. -73885390 1.

ANSWER TO COMPLAINT Case No: 09-CV-5939 PJH

84. 85. 86.

GoDaddy denies the allegations as set forth in paragraphs 84 of the Complaint. GoDaddy denies the allegations as set forth in paragraphs 85 of the Complaint. GoDaddy denies the allegations as set forth in paragraphs 86 of the Complaint.
AFFIRMATIVE AND OTHER DEFENSES

GoDaddy alleges the following affirmative and other defenses, reserving the right to modify, amend, and/or expand upon these defenses as discovery proceeds.
FIRST AFFIRMATIVE DEFENSE
87.

The Complaint, and each claim asserted within it, fails to state a claim upon which

relief can be granted.
SECOND AFFIRMATION DEFENSE

88.

The Complaint is barred, in whole or in part, by the Lanham Act safe harbor for

domain name registrars. 15 U.S.C. 1114.
THIRD AFFIRMATIVE DEFENSE
89.

The Complaint is barred, in whole or in part, by the equitable doctrines of waiver,

estoppel and laches.
FOURTH AFFIRMATIVE DEFENSE 90.

The Complaint is barred, in whole or in part, by the doctrine of acquiescence.
FIFTH AFFIRMATIVE DEFENSE

91.

The Complaint is barred, in whole or in part, by the statute of limitations.
SIXTH AFFIRMATIVE DEFENSE

92.

The Complaint is barred, in whole or in part, by the defense of misrepresentation oi

material facts.
SEVENTH AFFIRMATIVE DEFENSE

93.

The Complaint is barred, in whole or in party, by the failure of Petronas to mitigate

damages, if any.
EIGHTH AFFIRMATIVE DEFENSE
94.

The Complaint is barred, in whole or in part, by the failure of Petronas to join an

indispensable party as defendant in this action. -8ANSWER TO COMPLAINT Case No: 09-CV-5939 PJH
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PRAYER FOR RELIEF

WHEREFORE, GoDaddy prays for judgment in its favor as follows: a. That the Court deny the Complaint in its entirety, with prejudice, and

11 specifically deny each and every prayer for relief contained therein;

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b.

That the Court award GoDaddy its reasonable costs, disbursements, and

attorneys' fees incurred in this action, to the extent permitted by law, including but not limited to 15 U.S.C.

9 1117,28 U.S.C.
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1927, and Fed. R. Civ. P. 11; and

That the Court grant such other and further relief as the Court deems just

and equitable.

WILSON SONSINI GOODRICH & ROSATI Professional Corporation

By:

Is/ John L. Slafsky John L. Slafsky David E. Kramer Hollis Beth Hire

Attorneys for Defendant GoDaddy.corn, Inc.

-9ANSWER TO COMPLAINT Case No: 09-CV-5939 PJH

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DEMAND FOR JURY TRIAL
Defendant GoDaddy hereby demands a trial by jury of this action pursuant to Federal Rule of Civil Procedure 3 8 and Civil L.R. 3-6.

Dated: March 1l , 2 0 10

WILSON SONSINI GOODRICH & ROSATI Professional Corporation

By:

/st John L. Slafsky John L. Slafsky David E. Kramer Hollis Beth Hire

Attorneys for Defendant GoDaddy.com, Inc.

DEMAND FOR JURY TRIAL Case No: 09-CV-5939 PJH