Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 69

AMENDED COMPLAINT with Jury Demand against GoDaddy.com, Inc.. Filed by Petroliam Nasional Berhad. (Clark, Perry) (Filed on 9/29/2010) Modified on 9/30/2010 (vlk, COURT STAFF).

Petroliam Nasional Berhad v. GoDaddy.com, Inc.

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Perry R. Clark (California Bar No. 197101) Law Offices of Perry R. Clark 3457 Cowper St. Palo Alto, CA 94306 Telephone: [phone] Facsimile: [phone] E-Mail: [e-mail] Counsel for Plaintiff PETROLIAM NASIONAL BERHAD ("PETRONAS")

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION

PETROLIAM NASIONAL BERHAD ("PETRONAS") Plaintiff, v s. GO DADDY.COM, INC., Defendant.

) Case No.: C09-5939 PJH (JCS) ) ) FIRST AMENDED COMPLAINT ) ) JURY TRIAL DEMANDED ) ) ) ) ) )

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Plaintiff Petroliam Nasional Berhad ("Petronas" or "plaintiff") for its first amended complaint alleges as follows against defendant GoDaddy.com, Inc. ("GoDaddy"): THE PARTIES 1. Plaintiff Petronas is a corporation duly organized under the laws of Malaysia

with a principal place of business located at Tower 1, Petronas Twin Towers, Kuala Lumpur City Center, 50088 Kuala Lumpur, Malaysia. 2. Upon information and belief, defendant GoDaddy is an Arizona corporation with

a principal place of business at 14455 N. Hayden Rd., Suite 219, Scottsdale, Arizona, 85260. JURISDICTION AND VENUE 3. This case arises under the Lanham Act, 15 U.S.C. §§ 1051, et seq. There is also

diversity of citizenship between the parties and there is at least $75,000 in controversy. As such, the Court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. §§ 1331, 1332, and 1338(a) and (b) as well as under the principles of pendant jurisdiction. The Court also has supplemental jurisdiction under 28 U.S.C. § 1367. 4. 5. Venue is proper in this Court pursuant to 28 U.S.C. § 1391 (b) and (c). This Court has jurisdiction over GoDaddy because of, at least, GoDaddy's

contacts with this forum as well as its appearance and participation in this action. INTRADISTRICT ASSIGNMENT 6. Although this is an intellectual property case and, as a result, there is no basis for

assignment to any particular division pursuant to Civil L.R. 3-2(c), this case has been assigned to Hon. Phyllis J. Hamilton. FACTUAL ALLEGATIONS 7. Plaintiff is a fully-integrated oil and gas corporation and was ranked in 2008

among Fortune's Global 500 largest corporations in the world. Plaintiff's business, and the FIRST AMENDED COMPLAINT
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businesses of companies within its group, includes the full spectrum of oil and gas operations in the areas of upstream oil and gas exploration and production, downstream oil refining, marketing and distribution of petroleum products and fertilizer, trading, gas processing and liquefaction, gas transmission pipeline network operations, marketing of liquefied natural gas, petrochemical manufacturing and marketing, shipping, and propert y investment. 8. Plaintiff has operations in more than thirty-three (33) countries worldwide and

employs approximately 16,000 people. 9. The Petronas Twin Towers house plaintiff's headquarters and are one of the most

well-known landmarks in Asia. The Petronas Twin Towers are extremely closely identified with plaintiff. The Petronas Twin Towers attract visitors from Malaysia and the rest of the world for commercial, cultural, and other purposes. 10. Plaintiff's sole and official website is "www.petronas.com.my." Plaintiff also

owns "www.petronastwintowers.com.my," "www.petronas.com," "www.petronas.org," "www.petronas.my," and "www.petronastwintowers.com." 11. Plaintiff's official website "www.petronas.com.my" is a widely viewed

manifestation of plaintiff's brand and corporate identity. Among other things, plaintiff uses its official website to project a corporate image that reflects the values of the employees, management, and shareholders of plaintiff, including the people of Malaysia who, through the Government of Malaysia, own a stake in the company. Plaintiff also uses its official website to provide news and information about its business, to communicate with customers, potential customers, and employees, to recruit and hire employees for its locations around the word, to advertise its products, and to promote its brand. 12. Plaintiff uses the "petronastwintowers.com.my" domain name for the official

website of the Petronas Twin Towers and uses "petronastwintowers.com" to redirect to FIRST AMENDED COMPLAINT
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"petronastwintowers.com.my." The "petronastwintowers.com.my" website is intended to provide information to as many people as possible about the Petronas Twin Towers. 13. Plaintiff owns all right, title, and interest in U.S. Trademark No. 2969707 for

"PETRONAS." 14. Plaintiff has never authorized the use of the PETRONAS mark in connection

with the "petronastower.net" or "petronastowers.net" domain names or the pornographic websites to which GoDaddy used those domain names to direct Internet users. TECHNICAL OVERVIEW OF THE DOMAIN NAME SYSTEM 15. The Internet Corporation for Assigned Names and Numbers ("ICANN") is a

non-profit corporation involved in the administration of the "Domain Name System." The Domain Name System relates to the use of domain names, such as "www.cand.uscourts.gov," to allow computers to interact over the internet. 16. ICANN has entered into a "Registry Agreement" with VeriSign, Inc. to promote

and facilitate the security and stability of the Internet and the Domain Name System. Under the Registry Agreement, VeriSign is the sole "Registry Operator" for domain names ending in ".com." VeriSign and ICANN entered into a similar agreement for domain names ending in ".net." 17. As a Registry Operator, VeriSign maintains a database of registered domain

names that end in ".net" and the Internet Protocol addresses for the specific Name Servers that correspond to each domain name. VeriSign constantly propagates information from this database to thousands of computers connected to the internet around the world. When an internet user types a ".net" domain name into an Internet browser, the browser submits a query over the Internet that ultimatel y reaches a computer containing the record from the VeriSign database that contains the Internet Protocol addresses for the Name Server corresponding to the FIRST AMENDED COMPLAINT
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domain name. Using the Name Server's Internet Protocol address, the Internet browser can connect to the Name Server. The Name Server can provide the Internet browser with access to the data, files, information, services, or applications that the operator of the Name Server has designated as corresponding to the domain name. These can include files needed for the Internet browser to display a Web page, connections to an email service for the exchange of email, or applications for credit card processing, bank transactions, or internet telephony. (VeriSign Registry Glossary, www.verisign .com/domain-name-services/domain-information; The Domain Name Industry Brief, VeriSign, Inc., 2008). 18. VeriSign receives data identifying registered domain names and the Internet

Protocol addresses of the corresponding Name Servers from Registrars. Registrars must enter into a "Registrar Accreditation Agreement" with ICANN in order to submit data identifying registered domain names and the Internet Protocol addresses of the corresponding "Name Servers" to a Registry Operator. GODADDY'S SERVICES 19. Agreement." 20. Under the "Registrar Accreditation Agreement," GoDaddy is required to perform On information and belief, GoDaddy entered into a "Registrar Accreditation

"Registrar Services" which are defined as "contracting with Registered Name Holders, collecting registration information about the Registered Name Holders, and submitting registration information for entry in the registry database." Registered Name Holders (or "registrants") are the owners of registered domain names and are the entities that may authorize changes to the domain name information in the registry database, including the Internet Protocol address of the Name Servers corresponding to a registered domain name.

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21.

Section 3 of the "Registrar Accreditation Agreement" sets forth the "Registrar

Obligations" under the agreement. Section 3.1 requires GoDaddy to act as a registrar as required under the agreement. 22. Section 3.2 requires GoDaddy to submit to the Registry Operator the registered

domain name, the Internet Protocol address of two Name Servers corresponding to the domain name, and the names of the corresponding "Name Servers." 23. Section 3.3 requires GoDaddy to allow public access to the domain name

information it has submitted to the Registry Operator through a "Whois" service available over the Internet. 24. Sections 3.4 and 3.5 require GoDaddy to retain domain name information under

certain conditions. 25. Section 3.7 requires that GoDaddy abide by applicable laws and governmental

regulations as a Registrar. GoDaddy also must enter into an agreement with each registrant that allows GoDaddy to suspend, cancel, or transfer any domain name for the resolution of disputes concerning the domain name. 26. Nothing in GoDaddy's agreement with ICANN requires that GoDaddy provide a

Name Server to its domain name registrants or provide domain name forwarding services. 27. Usually, when a registrant registers a domain name with GoDaddy, GoDaddy

identifies its "parked nameservers" as the corresponding Name Servers for the domain name and submits this information to the Registry Operator. These servers display a temporary page in response to queries from Internet browsers. When a registrant determines that it wants to use a specific web hosting provider, GoDaddy instructs the registrant to direct GoDaddy to change the domain name's Name Servers to the web hosting provider's Name Servers. "Setting

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Nameserevers for Your Domain Names," http://help.godaddy.com/article/664; "How Do Domain Names Work?," http://help.godaddy.com/article/327?prog_id=GoDaddy. 28. In addition to registration services, GoDaddy allows users to purchase a "hosting

account" which allows users who registered their domain name with GoDaddy or another company to use GoDaddy's domain name servers and to list GoDaddy's name servers as the Name Servers corresponding to a domain name. "Setting Nameserevers for Your Domain Names," http://help.godaddy.com/article/664; "How Do Domain Names Work?," http://help.godaddy.com/article/327?prog_id=GoDaddy. 29. GoDaddy allows registrants who use its Name Servers for their domain names to

use GoDaddy's "Domain Name Forwarding" service. This services allows GoDaddy customers to "automatically direct their domain name's visitor to a different website." GoDaddy customers may also use "Masking," which "prevents visitors from seeing your domain name forwarding by keeping your domain name in the Web browser's address bar." GoDaddy only requires that "to forward or mask your domain name, you must use our name servers." "Forwarding or Masking Your Domain Name, http://help.godaddy.com/article/422?prog_id=godaddy; "Updating Your Domain Name's IP Address for Forwarding," http://help.godaddy.com/article/5289; "What Is DNS?," http://help.godaddy.com/topic/833/article/655; "Glossary of Technical Terms," http://help.godaddy.com/article/4498; "Registering Your Own Nameservers/Hosts," http://help.godaddy.com/topic/833/article/668. 30. On information and belief, GoDaddy provides its "domain name forwarding"

service to registrants who registered their domain names with registrars other than GoDaddy.

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31.

On information and belief, GoDaddy entered into a "Domain Name Registration

Agreement" with the registrant of the "petronastower.net" and "petronastowers.net" domain names. 32. The "Domain Name Registration Agreement" is between GoDaddy and the

registrant and binds GoDaddy and the registrant to GoDaddy's "Dispute Policy" and the "ICANN Transfer Dispute Resolution Policy." The "Domain Name Registration Agreement" allows GoDaddy to subject a registrant's domain name to "suspension, cancellation or transfer . . . pursuant to any GoDaddy policy . . . for the resolution of disputes concerning any domain name." 33. Under GoDaddy's "ICANN Transfer Dispute Resolution Policy," GoDaddy may

"cancel, transfer, or otherwise make changes to a domain name registration in accordance with the terms of your registration agreement." 34. GoDaddy also has promulgated a "Trademark and/or Copyright Infringement

Policy" which has been in effect at all relevant times. According to this policy, "GoDaddy.com, Inc. supports the protection of intellectual property. Whether you are the holder of a trademark, service mark, or copyright, GoDaddy is committed to helping you protect your legal rights. Therefore, we have established the following policies for considering trademark and/or copyright claims." This policy sets forth a specific procedure "to notify GoDaddy that there has been a copyright or trademark violation," which includes submitting a "notification of trademark violation" containing specific information identified by GoDaddy to a specific email address. According to the policy, "upon receipt of the appropriate identification [identified in the policy], for trademark claims, GoDaddy will institute an investigation. While GoDaddy is investigating the claim, GoDaddy, in its sole discretion and with no legal obligation to do so, may temporarily remove the challenged material from the GoDaddy Martketplace or from FIRST AMENDED COMPLAINT
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GoDaddy Auctions, notify the posting party it will lock down the posting party's domain name(s), redirect the posting part y's DNS, and/or if it is solely stored on a GoDaddy server, temporarily remove or deny access to the challenged material." The policy also allows GoDaddy to make the foregoing actions permanent. The policy also provides for a "counter notification" whereby a GoDaddy customer who receives a trademark infringement notice may have the foregoing restrictions lifted. THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT ("ACPA") 35. The Anticybersquatting Consumer Protection Act ("ACPA") of 1999 amended

the Trademark Act of 1946 (15 U.S.C. § 1125(d)) and provides civil liability against any person who with "bad faith" "registers, traffics in, or uses a domain name" that is a protected trademark, is "confusingly similar" to distinctive mark, or is "confusingl y similar to or dilutive" of a famous mark. The ACPA also allows the owner of mark to file an in rem action against a domain name that infringes its trademark rights under the ACPA if the registrant cannot be located despite the due diligence of the trademark owner. (15 U.S.C. § 112(d)(2)). 36. Congress passed the ACPA to "protect consumers from fraud, protect the value

of countless trademarks, and encourage continued growth in our electronics industry." (Cong. Record 106th Cong., Senate ­ June 21, 1999)). Congress also intended that the ACPA would stop "people [from] extorting companies by registering company names, misdirecting internet users to inappropriate sites, or otherwise attempting to damage a trademark that a business has spent decades building into a recognizable brand." The ACPA was also intended to stop "cybersquatters [who] often register well-known marks to prey on consumer confusion by misusing the domain name to divert customers from the mark owner's site to the cybersquatter's own site, many of which are pornography sites that derive advertising revenue based on the

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number of visits, or `hits,' the site receives." (Committee Reports, 106th Cong., Senate Reports 106-140)). 37. In addition to the direct harms of cybersquatting, the ACPA was intended to

address the problem that "trademark holders are battling thousands of cases of cybersquatting each year, the vast majority of which cannot be resolved through the dispute resolution policy set up by Internet domain name registries." (Committee Reports, 106th Cong., Senate Reports 106-140). Congress recognized the "ongoing efforts of the WIPO [World Intellectual Property Association] and ICANN to build a consensus global mechanism for resolving online trademark disputes" and intended that the ACPA would "build upon this progress and provide constructive guidance to trademark holders, domain name registrars and registries, and Internet users registering domain names." (Cong. Rec., 106th Cong., Senate-August 05, 1999). 38. Congress intended the ACPA to "encourage domain name registrars and

registries to work with trademark owners to prevent cybersquatting by providing a limited exemption from monetary damages for domain name registrars and registries that suspend, cancel, or transfer domain names pursuant to a court order or in the implementation of a reasonable policy prohibiting the registration of infringing domain names." (Committee Reports, 106th Cong., Senate Reports 106-140). 39. The ACPA was also intended to "promote the continued ease and efficiency

users of the current registration system enjoy by codifying current case law limiting the secondary liability of domain name registrars and registries for the act of registration of a domain name." (Committee Reports, 106th Cong., Senate Reports 106-140). Congress identified the "current case law" as "Panavision Int'l. v. Toeppen, 1316, 1319 (9th Cir. 1998) (holding that NSI is not responsible for making `a determination about registrant's right to use a domain name.'); Lockheed Martin Corporation v. Network Solutions, Inc., 985 F. Supp. 949 FIRST AMENDED COMPLAINT
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(C.D. Cal. 1997) (holding registrar not liable); Academy of Motion Picture Arts and Science v. Network Solutions, Inc., 989 F. Supp. 1276 (C.D. Cal. 1997) (holding that holder of registered trademarks could not obtain a preliminary injunction against domain name registrar)." 40. Congress included a "savings clause" in the ACPA providing that "the civil

action established under paragraph (1) and the in rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil action or remedy otherwise applicable." (15 U.S.C.A § 1125(d)(3)). CYBERSQUATTING ON "PETRONASTOWER.NET" AND "PETRONASTOWERS.NET" 41. On or about November 26, 2009, plaintiff learned that a person or persons

unknown to plaintiff had registered the domain name "pteronastower.net" without plaintiff's consent. The website affiliated with the "petronastower.net" domain name, found at "petronastower.net" contained highly offensive, obscene, and pornographic material. 42. On or about November 26, 209, plaintiff learned that the domain name

"petronastower.net" was registered with Defendant, GoDaddy. 43. The "petronastower.net" domain name was transferred by the registrant to

GoDaddy from another registrar on or about April 1, 2007. As such GoDaddy was listed as the registrar for the "petronastower.net" domain name beginning on or about April 1, 2007. 44. Two years later, on May 2, 2009, the registrant used GoDaddy's online

"dashboard" to instruct GoDaddy to use its Name Servers to provide its "domain name forwarding" service to direct anyone clicking on "petronastower.net" to be forwarded to a website containing highly offensive, obscene pornography. In order to implement GoDaddy's "domain name forwarding" service, the registrant was required to use GoDaddy's Name Servers

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and to instruct GoDaddy to associate GoDaddy's Name Servers with the "petronastower.net" domain name in the VeriSign domain name registry. 45. Beginning on or about November 26, 2009, plaintiff contacted GoDaddy

repeatedly to inform it of the unauthorized use of the PETRONAS mark in connection with the "petronastower.net" domain name and to inform it that highly offensive, obscene, and pornographic material was being displayed on the website associated with the "petronastower.net" domain name. Plaintiff also requested that GoDaddy investigate and take action against the website associated with the "petronastower.net" domain name. 46. On or about December 1, 2009, GoDaddy's "Spam and Abuse Department"

responded to plaintiff stating that "GoDaddy does not allow illegal content on our customer's websites. However, as a hosting provider, it is not our place to determine if the site you have mentioned is actually engaging in illegal activities." GoDaddy also stated that "any dispute over the wording or ownership of the domain name itself will need to be sent to either the registrant, through an arbitration forum such as http://wipo.int/ [the World Intellectual Propert y Organization] or the local court system. Per ICANN regulations, domain registrars are prohibited from becoming involved in domain name ownership disputes." As such, GoDaddy refused to take any action with respect to the "petronastower.net" domain name or the associated website that was accessible through GoDaddy's Name Servers. 47. On December 14, 2009 plaintiff contacted GoDaddy via telephone to inform it

that the "petronastower.net" domain name and the associated website remained active, and requested that the "petronastower.net" domain name and website be disabled. GoDaddy stated that it did not respond to allegations of trademark infringement unless they were submitted in writing according to GoDaddy's "Trademark and/or Copyright Infringement Policy."

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48.

On December 16, 2009, plaintiff again contacted GoDaddy and provided the

formal, written "Notice of Trademark Infringement" on the form required by GoDaddy's "Trademark and/or Copyright Infringement Policy" and to again request that the "petronastower.net" website be disabled. 49. On December 16, 2009 GoDaddy responded to plaintiff indicating that it would

not take any action regarding "petronastower.net." GoDaddy stated that "any issues regarding the content of the website will need to be addressed to the owner of the site either directly, or to the hosting provider." GoDaddy further stated that "we can only process claims of trademark infringement against the content of websites that we host. ICANN, the managing body of internet, domain name registrars, specifically prohibits domain registrars from getting involved in disputes over domain ownership in the Uniform Domain Name Dispute Resolution Policy. Any disputes over the ownership or wording of the domain name itself will need to be sent to either the registrant, through an arbitration forum, or the local court system." 50. On December 16, 2009, plaintiff sent an email to the registrant of

"petronastower.net" at the email listed for the registrant in GoDaddy's records and requested that it cease and desist using the "petronastower.net" domain name. Plaintiff also attempted to contact the registrant at the telephone number listed in GoDaddy's records but the listed number only connected to an automated and incoherent message. 51. On December 18, 2009, plaintiff moved for a temporary restraining order

requiring GoDaddy to remove from registration, remove from its servers, and otherwise disable public access to, the website "petronastower.net." The motion was supported by declarations of plaintiff's counsel and one of plaintiff's employees as well as a memorandum in support. GoDaddy opposed the motion and filed a declaration from its counsel as well as one of its employees in addition to its memorandum in opposition. The motion was heard and denied on FIRST AMENDED COMPLAINT
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December 23, 2009. All of the moving and responding papers, declarations in support, oral argument, and orders of the court regarding plaintiff's motion for temporary restraining order are incorporated as if set forth fully herein. Plaintiff sent all of the temporary restraining order papers to registrant by Federal Express. 52. On January 29, 2010, plaintiff filed an In Rem Complaint for Violation of 15

U.S.C. § 1125(d) (Cyberpiracy) against "petronastower.net." The case was assigned case number C10-00431. On February 8, 2010, GoDaddy received written notification of a filed, stamped copy of the complaint in case number C10-00431. On March 25, 2010, plaintiff made a motion for an order transferring to it the "petronastower.net" domain name and included in support of the motion the registrar certificate supplied by GoDaddy. On May 13, 2010, the Court granted the motion after the time for filing an opposition had passed and issued an order directing GoDaddy to transfer the "petronastower.net" domain name within ten days. All of the moving papers, declarations in support, and orders of the court regarding plaintiff's motion to transfer the domain name in case number C10-00431 are incorporated as if set forth fully herein. Plaintiff sent all of the In Rem papers to registrant by Federal Express. 53. In addition to the "petronastower.net" domain name, plaintiff learned that

GoDaddy was the registrar for the domain name "petronastowers.net." The "petronastowers.net" domain name provided access to the same pornographic website as the "petronastower.net" domain name. According to GoDaddy's records, GoDaddy was the registrar of the "petronastowers.net" domain name and the "petronastowers.net" domain name was registered by same the registrant as the "petronastower.net" domain name. 54. On July 7, 2010, plaintiff submitted a "Request for Trademark Claims" pursuant

to GoDaddy's policies. On July 8, 2010, GoDaddy responded that "although the domain PETRONASTOWERS.NET is registered through our company, the domain is forwarding to a FIRST AMENDED COMPLAINT
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website (camfunchat.com) that is hosted elsewhere. Any issues regarding the content of the website will need to be addressed to the owner of the site either directly, or to the hosting provider. We can only process claims of trademark infringement against the content of websites that we host. ICANN, the managing body of internet, domain name registrars, specifically prohibits domain registrars from becoming involved in disputes over domain ownership in their Uniform Domain Name Dispute Resolution Policy. Any 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." 55. On July 12, 2010, plaintiff filed an In Rem Complaint for Violation of 15 U.S.C.

§ 1125(d) (Cyberpiracy) against "petronastowers.net," case number C10-3052. On July 14, 2010, GoDaddy provided the required "Registrar Certificate." On August 27, 2010, the Court issued an order directing GoDaddy to transfer the "petronastowers.net" domain name to plaintiff after the registrant failed to oppose plaintiff's motion for an order transferring the domain name. All of the moving papers, declarations in support, and orders of the court regarding plaintiff's motion to transfer the domain name in case number C10-03052 are incorporated as if set forth fully herein. Plaintiff sent all of the second In Rem action papers to registrant by Federal Express. 56. GoDaddy transferred the "petronastower.net" domain name to plaintiff on May

18, 2010 and the "petronastowers.net" domain name on August 30, 2010. 57. GoDaddy does not occupy the neutral position of a registrar and is not working

with trademark owners to prevent cyber-squatting. 58. As of the filing of the Original Complaint in this action, GoDaddy had not taken

any steps to remove or otherwise disable the connection and affiliation between the "petronastower.net" and "petronastowers.net" domain names and the pornographic website. FIRST AMENDED COMPLAINT
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COUNT ONE CYBERSQUATTING--15 U.S.C. § 1125(D) Plaintiff realleges and incorporates by reference each of the allegations contained

in Paragraphs 1 through 58 of this Complaint as though fully set forth herein. 60. Plaintiff is the owner of and has full right, title, and interest in U.S. Trademark

No. 2969707 for "PETRONAS." 61. 62. relevant times. 63. The registrant of the "peteronastower.net" and "petronastowers.net" domain Plaintiff has used the "PETRONAS" mark continually since at least 2005. The "PETRONAS" mark was distinctive, famous, and federally registered at all

names licensed, impliedly or otherwise, GoDaddy's use of the "peteronastower.net" and "petronastowers.net" domain names, including GoDaddy's use of the "peteronastower.net" and "petronastowers.net" domain names in conjunction with its Name Servers to forward, direct, and/or connect Internet users to a pornographic website. 64. Upon information and belief, beginning on or before December 18, 2009,

GoDaddy used the "peteronastower.net" and "petronastowers.net" domain names as described above with knowledge of plaintiff's rights in the PETRONAS mark and with knowledge of plaintiff's use of the PETRONAS mark as an integral part of its internet presence and its associated domain names. 65. By continuing to use the "petronastower.net" and "petronastowers.net" domain

names with knowledge of the forgoing, GoDaddy, upon information and belief, intended to divert consumers to a pornographic website that could and did harm the goodwill represented by plaintiff's PETRONAS mark by, at least, confusing consumers as to whether plaintiff was the source of or affiliated with the site. FIRST AMENDED COMPLAINT
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66.

As part of GoDaddy's agreement with the registrant of "petronastower.net" and

"petronastowers.net" as well as its "Trademark and/or Copyright Infringement Policy" and other policies and agreements (including those referenced herein), GoDaddy could have ceased the foregoing use of the "petronastower.net" and "petronastowers.net" domain names at its discretion and without breaching any agreement or policy or incurring any liability to the registrant or any other party. 67. Under the ICANN agreements and policies, GoDaddy was permitted to

unilaterally and in its sole discretion cease the foregoing use of the "petronastower.net" and "petronastowers.net" domain names without breaching those agreements or incurring any liability to the registrant or any other party. 68. GoDaddy would have fallen within the ACPA's "safe harbor" (15 U.S.C. §

1114(d)) for registrars and would have been shielded from liability under the ACPA if it had removed from registration, transferred to plaintiff, temporarily disabled, or permanently cancelled the "petronastower.net" and "petronastowers.net" domain names at plaintiff's request and pursuant to GoDaddy's "Trademark and/or Copyright Infringement Policy." 69. Upon information and belief, GoDaddy did not charge the registrant a fee for its

domain name forwarding service or for GoDaddy's use of the "petronastower.net" and "petronastowers.net" domain names in addition to or separatel y from its standard domain name registration fee. 70. Upon information and belief, the amount of consideration GoDaddy received

from the registrant in connection with GoDaddy's use of the "petronastower.net" and "petronastowers.net" domain names did not depend on the domain names use of or similarity to the PETRONAS mark, or their relationship to the plaintiff's trademark rights.

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71.

Upon information and belief, GoDaddy's ability to use plaintiff's mark as

described above is important, "crucial," "central," and/or "core" to its business because, among other things, it receives thousands of notices every year from trademark owners informing GoDaddy that its use of their marks in a manner similar to GoDaddy's use of plaintiff's mark infringes their trademark rights. 72. Upon information and belief, GoDaddy continued to use plaintiff's PETRONAS

mark as described above because it believed that if it stopped such use without being compelled to do so by a Court order or by an order from an ICANN-affiliated tribunal or other tribunal, GoDaddy might be compelled to work with trademark owners to process, investigate, and resolve trademark owners' claims that GoDaddy's services and actions infringe their trademark rights and to possibly discontinue those services and actions. 73. Upon information and belief, GoDaddy believed the foregoing would decrease

its revenue and/or profit or cause it to lose customers or potential customers. 74. Upon information and belief, GoDaddy's use of the "petronastower.net" and

"petronastowers.net" domain names as described above was committed with an intent to profit from the PETRONAS mark by allowing GoDaddy to set a "precedent" on which it could rel y to avoid the expense of investigating trademark owner's complaints associated with GoDaddy's use of their marks in the manner similar to its use of plaintiff's mark as described above. 75. By reason of the acts alleged herein, plaintiff is entitled to recover GoDaddy's

profits, actual damages, and costs of the action, and/or statutory damages under 15 U.S.C. § 1117, on election by plaintiff, in an amount of one hundred thousand dollars ($100,000) per domain name infringed. 76. This is an exceptional case making plaintiff eligible for an award of attorney's

fees under 15 U.S.C. § 1117. FIRST AMENDED COMPLAINT
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 77.

COUNT TWO CONTRIBUTORY LIABILITY FOR CYBERSQUATTING Plaintiff realleges and incorporates by reference each of the allegations contained

in Paragraphs 1 through 76 of this Complaint as though fully set forth herein. 78. The registrant of the "peteronastower.net" and "petronastowers.net" domain

names committed cybersquatting trademark infringement beginning at least on May 2, 2009. 79. GoDaddy used its Name Servers to provide its domain name forwarding service

in connection with the "peteronastower.net" domain name and, and upon information and belief, the "petronastowers.net" domain name. 80. Upon information and belief, GoDaddy used hardware, software, and other

instrumentalities separately or in conjunction with its Name Servers to provide its domain name forwarding service in connection with the "peteronastower.net" domain name and, and upon information and belief, the "petronastowers.net" domain name. 81. The above-mentioned domain name forwarding service that GoDaddy provided

to registrant pointed, linked, connected, associated, affiliated, or otherwise related the "peteronastower.net" and "petronastowers.net" domain names to a pornographic website so that internet users searching for or utilizing those domain names would see and be given access to a pornographic website. 82. Upon information and belief, GoDaddy pointed, linked, connected, associated,

affiliated, or otherwise related the "peteronastower.net" and "petronastowers.net" domain names to a pornographic website by utilizing and/or providing a service or application in addition to or in conjunction with the domain name forwarding service identified above. 83. Beginning no later than November 2009, GoDaddy knew, or should have known,

that its services and actions in connection with the "peteronastower.net" and FIRST AMENDED COMPLAINT
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"petronastowers.net" domain names were being used by the registrant to infringe on plaintiff's trademark rights and to commit cybersquatting. 84. GoDaddy was, in any event, willfully blind to the registrant's cybersquatting and

the fact that GoDaddy's above-described actions were allowing, enabling, facilitating, and making possible the registrant's cybersquatting 85. GoDaddy maintained and implemented a policy of refusing to "process,"

investigate, or meaningfully respond to claims of trademark infringement, including claims of trademark infringement submitted according to its own policy such as those submitted by plaintiff. 86. GoDaddy did in fact refuse to "process," investigate, or meaningfully respond to

plaintiff's claims of cybersquatting trademark infringement. 87. GoDaddy committed contributory cybersquatting by continuing to provide its

above described services and activities related to the "peteronastower.net" and "petronastowers.net" domain names after it knew, or should have known, of the registrant's cybersquatting trademark infringement and knew, or should have known, that its services were necessary to and enabled the registrant's cybersquatting trademark infringement. 88. GoDaddy committed contributory cybersquatting by failing and refusing to

remove from registration, transfer to plaintiff, temporarily disable, or permanently cancel the "petronastower.net" and "petronastowers.net" domain names until ordered to do so by the Court. 89. GoDaddy committed contributory cybersquatting by refusing to investigate

plaintiff's trademark claims regarding the "peteronastower.net" and "petronastowers.net" domain names or take any action that would no longer permit, enable, or allow the

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"peteronastower.net" and "petronastowers.net" domain names or the PETRONAS mark to be associated with the pornographic websites to which they were associated. 90. Upon information and belief, GoDaddy provided its domain name forwarding

service and the other above-described services and actions with same intent to profit from plaintiff's PETRONAS mark that GoDaddy had when it used the "peteronastower.net" and "petronastowers.net" domain names as set forth in Count One above. 91. Upon information and belief, GoDaddy intended to profit from the registration of

the "peteronastower.net" and "petronastowers.net" domain names and the maintenance of the registration of those domain names in the same way it intended to profit from using the "peteronastower.net" and "petronastowers.net" domain names as set forth in Count One above by providing its domain name forwarding service and the other above-described services and actions to the registrant. 92. GoDaddy acted in bad faith and with a bad faith intent to profit from the

goodwill Plaintiff established in its PETRONAS mark, including by refusing to discontinue its domain name forwarding services and other above described services at any time prior to an order from the Court that it do so and/or by refusing to take any action in response to plaintiff's notices of trademark infringement. 93. GoDaddy does not have any intellectual property rights or any other rights in the

PETRONAS mark. 94. On information and belief, the "peteronastower.net" and "petronastowers.net"

domain names do not consist of the legal name of the registrant, host, or registrar, including GoDaddy, nor a name that is otherwise commonly used to identify any of these individuals or entities.

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95.

By reason of the acts alleged herein, plaintiff is entitled to recover GoDaddy's

profits, actual damages, and the costs of the action, or statutory damages under 15 U.S.C. § 1117, on election by plaintiff, in an amount of one hundred thousand dollars ($100,000) for each domain name. 96. This is an exceptional case making plaintiff eligible for an award of attorney's

fees under 15 U.S.C. § 1117. COUNT THREE UNFAIR COMPETITION UNDER CALIFORNIA BUSINESS & PROFESSIONS CODE § 17200 AND CALIFORNIA COMMON LAW 97. Plaintiff realleges and incorporates by reference each of the allegations contained

in Paragraphs 1 through 96 of this Complaint as though fully set forth herein. 98. GoDaddy has contributed to, intentionally induced, and facilitated the

unauthorized used in commerce by cybersquatting trademark infringement of the PETRONAS mark, in violation of plaintiff's proprietary rights. Such acts constitute unfair trade practices and unfair competition under California Business and Professions Code § 17200 et seq., and under the common law of the State of California, entitling plaintiff to relief. 99. Pursuant to California Business and Professions Code § 17203, GoDaddy is

required to disgorge and restore to plaintiff all profits and property acquired by means of Defendant's unfair competition. 100. Due to the GoDaddy's conduct, plaintiff has suffered irreparable harm, suffered

injury in fact, and has lost money or property as a result of GoDaddy's acts of unfair business practices alleged herein. It would be difficult to ascertain the amount of money damages that would afford plaintiff adequate relief at law for GoDaddy's acts. Plaintiff's remedy at law is

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not adequate to compensate it for its injuries. Accordingl y, Plaintiff is entitled to relief pursuant to California Business and Professions Code § 17203. 101. On information and belief, Defendant's conduct has been intentional and willful

and in conscious disregard of plaintiff's rights and, therefore, plaintiff is entitled to its attorney's fees. RELIEF REQUESTED Therefore, plaintiff respectfully requests judgment against GoDaddy as follows: 102. GoDaddy has infringed plaintiff's rights in the "PETRONAS' mark in violation

of 15 U.S.C. § 1125(d); 103. GoDaddy has infringed plaintiff's rights in the "PETRONAS" mark in violation

of 15 U.S.C. § 1114(1); 104. GoDaddy has violated plaintiff's rights in the "PETRONAS" mark in violation

of 15 U.S.C. § 1125(a); 105. GoDaddy has violated plaintiff's rights in the "PETRONAS" mark in violation

of 15 U.S.C. § 1125(c); 106. GoDaddy has infringed plaintiff's rights in the "PETRONAS" mark in violation

of California Business and Professions Code § 17200 and the common law; 107. That this case be declared exceptional under 15 U.S.C. § 1117 and any other

applicable statute; 108. damages; 109. GoDaddy pay plaintiff actual damages as provided under the Lanham Act and GoDaddy's conduct was willful, entitling plaintiff to enhanced and increased

that those damages be trebled;

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110.

GoDaddy be ordered to pay statutory damages under 15 U.S.C. § 1117, on

election by plaintiff, in an amount of no less than One Hundred Thousand Dollars ($100,000) per domain name and those damages be trebled; 111. GoDaddy pay plaintiff's attorneys' fees, prejudgment interest, and costs of this

action under 15 U.S.C. § 1117 and under California Business and Professions Code § 17200, and under the California common law; 112. GoDaddy be ordered to account to plaintiff for, and disgorge, all profits it may

have derived by reason of the unlawful acts complained of above; 113. GoDaddy be held directly liable as well as jointly and severally liable for all

damages and relief requested or awarded; 114. Plaintiff be awarded any other further relief as the Court may deem just and

Respectfully Submitted, Dated: September 29, 2010 Law Offices of Perry R. Clark

/S/ Perry R. Clark

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Dated: September 29, 2010

DEMAND FOR JURY TRIAL Plaintiff hereby demands a jury trial to decide all issues so triable in this case pursuant to Rule 38(b) of the Federal Rules of Civil Procedure. Respectfully Submitted, Law Offices of Perry R. Clark

/S/ Perry R. Clark

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