Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 42

SECOND JOINT CASE MANAGEMENT STATEMENT filed by GoDaddy.com, Inc., Petroliam Nasional Berhad. (Slafsky, John) (Filed on 7/14/2010) Modified on 7/15/2010 (vlk, COURT STAFF).

Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Doc. 42

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Perry R. Clark, Esq. Law Offices of Perry R. Clark 3457 Cowper Street Palo Alto, CA 94306 Telephone: [phone] Facsimile: [phone] [e-mail] Attorney for Plaintiff PETROLIAM NASIONAL BERHAD 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] [e-mail] [e-mail] [e-mail] Attorneys for Defendant GODADDY.COM, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA PETROLIAM NASIONAL BERHAD, Plaintiff, vs. GODADDY.COM, INC., Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) CASE NO: 09-CV-5939 PJH

SECOND JOINT CASE MANAGEMENT STATEMENT

Plaintiff Petroliam Nasional Berhad ("Plaintiff" or "Petronas") and Defendant GoDaddy.com, Inc. ("Defendant" or "GoDaddy"), pursuant to the Northern District's Standing Order and the Court's June 15, 2010 Order, jointly submit this Second Case Management Statement.
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SECOND JOINT CASE MANAGEMENT STATEMENT Case No: 09-CV-5939 PJH
Dockets.Justia.com

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INTRODUCTION Plaintiff Petronas (short for Petroliam Nasional Berhad) is the national oil and gas company of Malaysia and the record owner of a federal trademark registration for the mark PETRONAS AND DESIGN. Defendant GoDaddy is the world's largest registrar of Internet domain names, maintaining over 40 million domain names for customers around the world. GoDaddy is based in Arizona. In 2003 an individual with a London, England address -- Heiko Schoenekess -- registered the Internet domain name <petronastower.net>. Since that time Mr. Schoenekess has registered the domain name with GoDaddy and apparently posted pornography at this Internet address. Plaintiff maintains that the <petronastower.net> domain name is infringing and that the pornography posted at this online address is offensive. Plaintiff is suing GoDaddy, the domain name registrar, alleging that GoDaddy has acted with bad faith by allowing and maintaining the <petronastower.net> domain name registration. Defendant maintains that, as a matter of law, it is not responsible for the alleged trademark infringement of Mr. Schoenekess or for the content posted at the <petronastower.net> address. Defendant further maintains that Plaintiff is suing the wrong party (by suing GoDaddy rather than Mr. Schoenekess) and that Plaintiff, if its allegations concerning the domain name are true, should have brought an expedited domain name arbitration proceeding years ago. According to Defendant, so-called UDRP domain name arbitrations last only about 60 days from start to finish, with trademark owners winning the arbitrations approximately 85% of the time. Plaintiff moved this Court for a temporary restraining order against GoDaddy in the days just before Christmas. On December 23, 2009 the Court denied the motion in its entirety. On January 29, 2010 Plaintiff filed a related lawsuit in the Northern District, pursuant to the "in rem" provisions of the Lanham Act, against the same disputed domain name (<petronastower.net>) as a defendant. See Case No. C10-00 431 EMC. As a result, the Court transferred ownership of the disputed domain name to Petronas on May 13, 2010. The parties' March 18, 2010 Joint Case Management Statement stated that "Plaintiff now maintains that it intends to dismiss this action once it secures entry of judgment in the related `in 4018117_3. -2SECOND JOINT CASE MANAGEMENT STATEMENT Case No: 09-CV-5939 PJH

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rem' action." Plaintiff's counsel earlier stated that "Given GoDaddy's willingness to promptly provide the required certification and cooperate in the expeditious resolution of the [in rem action], we expect that the in rem action . . . will be resolved shortly, and if so, that the Petronas/GoDaddy case can be dismissed before [GoDaddy's Answer deadline]." Plaintiff has since changed its position in this regard. After the conclusion of the "in rem" action, Plaintiff discovered a site using the domain name "PETRONASTOWERS.NET" which mirrors the content of the site using the "PETRONASTOWER.NET" domain name prior to its transfer to Plaintiff. As it did with respect to the "PETRONASTOWER.NET" domain name, Plaintiff submitted a "Request for Trademark Claim" pursuant to Defendant's "Trademark and/or Copyright Infringement Policy" informing Defendant of Plaintiff's trademark rights with respect to the "PETRONASTOWERS.NET" domain name, requesting that the domain name be disabled, and providing all of the information required by Defendant's "Trademark and/or Copyright Infringement Policy." Defendant responded by stating that it "can only process claims of trademark infringement against the content of websites that we host" and that it does not host the website that uses the "PETRONASTOWERS.NET" domain name. Defendant indicated that it would not become involved in Plaintiff's request that the domain name be disabled and that "[a]ny disputes over the ownership or wording of the domain name itself will need to be sent either to the owner, or through an arbitration forum, or the local court system." On July 12, 2010, Plaintiff filed an "in rem" action in the Northern District of California under the Lanham Act seeking to have the "PETRONASTOWERS.NET" domain name transferred to Plaintiff. 1. Jurisdiction and Service: Plaintiff alleges subject matter jurisdiction under 28

U.S.C. §§ 1131 and 1338(b) insofar as its federal claims arise under the Lanham Act. Defendant has answered the complaint, and elected not to file a Rule 12 motion with respect to either personal jurisdiction or venue. No parties remain to be served. 2. Facts: In the Complaint Plaintiff asserts claims against Defendant for

cybersquatting and contributory cybersquatting, trademark infringement and contributory trademark infringement, false designation of origin, dilution, and state statutory and commonlaw trademark infringement. Defendant has filed an Answer denying the substantive allegations 4018117_3. -3SECOND JOINT CASE MANAGEMENT STATEMENT Case No: 09-CV-5939 PJH

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in the Complaint and asserting various affirmative defenses. Defendant argues, in particular, that domain name registrars are shielded from liability for damages and injunctive relief, pursuant to statutory defenses in the Lanham Act and well-established Ninth Circuit case law. The principal factual issues in dispute are: · How long Plaintiff has been aware of the disputed domain name and/or the content posted at that address; · Whether Plaintiff has been vigilant as a trademark owner about monitoring third-party violations and enforcing its trademark rights; · Whether there has been any actual confusion arising from the registration or use of the disputed domain name; · Whether Internet users who visit the website at <petronastower.net> are likely to be confused about the source of goods or services or content promoted there, or about any appearance of sponsorship or endorsement by Plaintiff; · Whether Plaintiff's representations to the U.S. Patent and Trademark Office concerning its PETRONAS mark were accurate; and · Whether Defendant GoDaddy has had notice that the disputed domain name is allegedly infringing, dilutive or otherwise illegal. 3. Legal Issues: The disputed points of law in this matter are: · Whether and to what extent Plaintiff's federal trademark registration is enforceable in the United States; · · Whether the disputed domain name is infringing or dilutive; Whether Defendant has acted with a bad faith intent to profit from Plaintiff's trademark; · Whether a domain name registrar is responsible for the infringement, dilution or unfair competition of its registrant customers (See, e.g., 15 U.S.C. § 1114(2)(D); Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (9th Cir. 1999); -4SECOND JOINT CASE MANAGEMENT STATEMENT Case No: 09-CV-5939 PJH

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Whether Plaintiff's claims are barred by the equitable doctrines of laches, acquiescence, waiver and/or estoppel;

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Whether Plaintiff has suffered damage as a result of any act or omission by Defendant;

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Whether Plaintiff is entitled to statutory damages; Whether this is an "exceptional case," pursuant to 15 U.S.C. § 1117(a), entitling Defendant or Plaintiff to an award of reasonable attorneys' fees; and

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Whether this is a frivolous action in violation of Fed. R. Civ. P. 11 and entitling Defendant to an attorneys' fees award or other sanctions.

Motions: Plaintiff's motion for a temporary restraining order was denied on

December 23, 2009. Defendant intends to file a motion for judgment on the pleadings and to seek reimbursement for its attorney fees pursuant to, inter alia, 15 U.S.C. § 1117(a). Defendant is also considering a motion for sanctions pursuant to Rule 11. Defendant, if necessary, will move at a later stage for summary judgment. Plaintiff intends to file a motion to dismiss and/or strike Defendant's Sixth Affirmative Defense of "misrepresentation of material facts." 5. Amendment of Pleadings: Defendant requests that the deadline for the parties to

amend their pleadings be August 29, 2010. Plaintiff opposes this request on the grounds that the parties previously agreed that the deadline for the parties to amend their pleading be April 25, 2010 and the parties jointly proposed this deadline to the Court in the March 18, 2010 Case Management Conference statement. 6. Evidence Preservation: Plaintiff has taken steps to preserve potentially relevant

evidence. Defendant has circulated an internal "litigation hold" memorandum concerning all evidence related to this matter. 7. 8. Disclosures: The parties will exchange Initial Disclosures on July 15, 2010. Discovery: The parties have met and conferred concerning a proposed discovery

plan pursuant to Rule 26(f). There has been no discovery to date. The parties propose dates 4018117_3. -5SECOND JOINT CASE MANAGEMENT STATEMENT Case No: 09-CV-5939 PJH

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below for key pretrial and trial deadlines. The parties do not propose any limitations or modifications of the standard discovery rules. 9. 10. Class Actions: This is not a class action. Related Cases: Plaintiff's Northern District "in rem" Lanham Act action (Case

No. C10-00431 EMC) against the same disputed domain name is related to this action and has been consolidated herein. That action is completed. On July 12, 2010, Plaintiff filed an "in rem" action (10-CV-03052) against the domain name "PETRONASTOWERS.NET" and Plaintiff will move to have that action related to this action. Defendant has petitioned the U.S. Patent and Trademark Office (USPTO) to cancel Plaintiff's trademark registration for PETRONAS AND DESIGN, alleging misrepresentations in the application as well as partial or complete abandonment of the registered trademark. The USPTO cancellation proceeding is pending. 11. Relief: Plaintiff seeks statutory and other damages, an attorneys' fees award, and

injunctive relief, including an order mandating transfer of the disputed domain name to Plaintiff. Defendant seeks dismissal of all claims in the Complaint as well as reimbursement for its attorneys' fees, pursuant to the Lanham Act, Fed. R. Civ. P. 11 and 28 U.S.C. § 1927. 12. Settlement and ADR: Defendant has not been served with any orders or other

documents related to alternative dispute resolution (ADR) for this matter. 13. Consent to Magistrate Judge For All Purposes: The parties do not consent to

having a magistrate judge conduct all further proceedings. 14. Other References: The parties do not believe that this action is suitable for

reference to binding arbitration, a special master, or the Judicial Panel on Multidistrict Litigation. 15. Narrowing of Issues: The parties do not see a basis for narrowing issues by

agreement, motion or bifurcation. 16. Expedited Schedule: Insofar as Plaintiff is based in Malaysia, the registrant of the

disputed domain name is in England, and the alleged pornography appears to be originating in Switzerland, there is likely to be considerable international discovery, and thus an expedited schedule is unlikely to be appropriate for this action. -6SECOND JOINT CASE MANAGEMENT STATEMENT Case No: 09-CV-5939 PJH

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Scheduling: The parties' proposed dates for designation of experts, discovery

cutoff, hearing of dispositive motions, pretrial conference and trial are set forth below: Designation of experts: February 1, 2011 Discovery cutoff: March 15, 2011 Hearing of dispositive motions: May 25, 2011 Pretrial conference: July 28, 2011 Trial: August 8, 2011 18. Trial: This case will be tried to a jury, and the expected length of trial is four

19.

Disclosure of Non-party Interested Entities or Persons: The parties have each

filed a "Certification of Interested Entities or Persons" required by the Local Rules. Plaintiff restates the content of its certification that the following persons, associations of persons, firms, partnerships, corporations (including parent corporations), or other entities have either (i) a financial interest in the subject matter in controversy or in a party to the proceeding; or (ii) any other kind of interest that could be substantially affected by the outcome of the proceeding: 1. Petroliam Nasional Berhad (PETRONAS), 2. The Government of Malaysia. Defendant restates the contents of its certification as follows: "The following listed persons, associations of persons, firms, partnerships, corporations (including parent corporations) or other entities (i) have a financial interest in the subject matter in controversy or in a party to the proceeding, or (ii) have a non-financial interest in that subject matter or in a party that could be substantially affected by the outcome of this proceeding: The Go Daddy Group, Inc." /// /// /// /// /// -7SECOND JOINT CASE MANAGEMENT STATEMENT Case No: 09-CV-5939 PJH
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Dated: July 14, 2010

LAW OFFICES OF PERRY R. CLARK

By:

/s/ Perry R. Clark Perry R. Clark

.

Attorney for Plaintiff PETROLIAM NASIONAL BERHAD Dated: July 14, 2010 WILSON SONSINI GOODRICH & ROSATI Professional Corporation

By:

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

.

Attorneys for Defendant GODADDY.COM, INC.

SIGNATURE ATTESTATION I, John L. Slafsky, hereby attest that all signatories to this document have consented to the e-filing of this document.

Dated: July 14, 2010

By:

/s/ John L. Slafsky John L. Slafsky

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