Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 81

REPLY (re 77 MOTION to Dismiss First Amended Complaint ) -- REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT -- filed byGoDaddy.com, Inc.. (Slafsky, John) (Filed on 2/23/2011)

Petroliam Nasional Berhad v. GoDaddy.com, Inc.

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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 Go Daddy.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 REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT DATE: March 9, 2011 TIME: 9:00 a.m. JUDGE: Hon. Phyllis J. Hamilton

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REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

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REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

TABLE OF CONTENTS Page I. II. INTRODUCTION...............................................................................................................1 ALL COUNTS IN THE FIRST AMENDED COMPLAINT SHOULD BE DISMISSED........................................................................................................................2 A. B. Go Daddy's Routing Function Is Substantially Similar to the Routing Service in Lockheed ................................................................................................2 Routing of Internet Traffic Is a Protected Activity of Domain Name Registrars.................................................................................................................2 1. The ACPA and Well-Established Case Law Make Clear that Domain Name Registrars Performing Their Registration and Routing Functions Are Not Cybersquatters ................................................2

C.

Plaintiff Has Failed to State a Claim for Direct Cybersquatting.............................5 1. 2. Plaintiff Has Not Alleged that Go Daddy Registered, Trafficked in, or Used the Domain Names ........................................................................5 Plaintiff Has Not Alleged that Go Daddy Had a Bad Faith Intent to Profit from Plaintiff's Mark ........................................................................6 a. b. c. Bad Faith Intent to Profit is Not Pled in the FAC ...........................6 Plaintiff Has Not Alleged Bad Faith Intent to Profit From its Mark ................................................................................................7 The Nine "Bad Faith" Factors in the ACPA Are Inapplicable to This Case .....................................................................................9

D. E. III.

Plaintiff Has Failed to State a Claim for Contributory Cybersquatting ................10 Plaintiff's Unfair Competition Claim Falls with the Cybersquatting Claims .......11

CONCLUSION .................................................................................................................12

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TABLE OF AUTHORITIES Page(s) CASES Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002)....................................................................... passim Denbicare U.S.A., Inc. v. Toys "R" Us, Inc., 84 F.3d 1143 (9th Cir. 1996)................................. 11 DSPT Int'l, Inc. v. Nahum, 624 F.3d 1213 (9th Cir. 2010) ............................................................. 7 Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635 (E.D. Mich. 2001) ................. 11 Inwood Labs., Inc. v. Ives Labs., Inc., 456 US 844 (1982) ........................................................... 10 Jones v. Cmty. Redevelopment Agency of the city of Los Angeles, 733 F. 2d 646 (9th Cir. 1984) ..................................................................................................................... 7 Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 (C.D. Cal. 1997)...................................................................... 3, 4, 10, 11 Lockheed Martin Corp. v. Network Solutions, Inc. 194 F.3d 980 (9th Cir. 1999)...................................................................................... passim Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648 (N.D. Tex. 2001)........................................................................ 5, 7, 8 Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092 (C.D. Cal. 2009) ......................... 3, 5, 8 Verizon Cal. Inc. v. OnlineNIC, Inc., 647 F. Supp. 2d 1110 (N.D. Cal. 2009)............................... 3 Webquest.com, Inc. v. Hayward Indus., 2010 U.S. Dist. LEXIS 1118188 (E.D. Cal. 2010).................................................................................................................................... 8 STATUTES 15 U.S.C. § 1125(d)(1)(B) .............................................................................................................. 9 15 U.S.C. § 1125(d)(1)(A)(i) .................................................................................................. 5, 6, 7 15 U.S.C. § 1125(d)(1)(D) .............................................................................................................. 5 California Business and Professions Code § 17200...................................................................... 11 MISCELLANEOUS J. Moore & J. Lucas, Moore's Federal Practice ¶ 8.13 (2d Ed.1983) ............................................. 7

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I.

INTRODUCTION Plaintiff Petroliam Nasional Berhad's ("Plaintiff's") Opposition rests on one erroneous

premise: that Defendant GoDaddy.com, Inc.'s ("Go Daddy's") routing service is not a protected activity of domain name registrars. This argument flies in the face of the decade-old law of Lockheed v. Network Solutions, Inc.,1 and also the law of this case, insofar as this Court has already held that in Lockheed, "defendant Network Solutions, Inc. (`NSI') was not liable for contributory infringement based on its `routing' of a domain-name registrant's allegedly infringing domain name, as the `routing' was simply a `service' connected to the registration service." Order Granting Go Daddy's Motion for Judgment on the Pleadings ("Order"), at 3. Plaintiff never disputes that the activity alleged in the First Amended Complaint ("FAC") is merely the routing service of a domain name registrar.2 Instead, Plaintiff argues that somehow this routing service subjects a domain name registrar to liability under the Anti-Cybersquatting Consumer Protection Act ("ACPA"), despite well-established case law to the contrary.

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Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999).

When discussing the Opposition, Go Daddy refers to the arguments and page numbers in the so-called "corrected" opposition filed mid-day on February 17. Though Plaintiff's opposition was due on February 16, Plaintiff did not file any response to Go Daddy's Motion until February 17. The initial response was replete with Local Rule violations (in addition to being filed late, the response was not on proper pleading paper, and did not include tables even though it was well over 10 pages, for example). (Docket No. 78.) Subsequently, Plaintiff filed another late pleading, curiously titled the "Opposition to the Corrected Motion to Dismiss First Amended Complaint," which included tables and pleading paper. (Docket No. 79.) This document included additional argument, as well as corrected formatting. Then, a day later, Plaintiff filed a "supplemental" opposition, including two pages of additional argument (as well as several pages of incomprehensible notes, which presumably were filed in error). (Docket No. 80.) This late response by dribs and drabs is not only in violation of the Local Rules, it is also prejudicial to Go Daddy, which had only one week ­ over a holiday weekend ­ to draft a reply. For these reasons, Go Daddy moves to strike Plaintiff's various opposition papers in their entirety. -1REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH
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II.

ALL COUNTS IN THE FIRST AMENDED COMPLAINT SHOULD BE DISMISSED A. Go Daddy's Routing Function Is Substantially Similar to the Routing Service in Lockheed

Plaintiff does not dispute that Go Daddy's function as alleged in the FAC is virtually indistinguishable from NSI's function in the seminal Lockheed case. This Court has already determined that if the service Go Daddy provided here were substantially similar to the routing service NSI provided in Lockheed, Plaintiff's claims "will likely fail." See Order at 4 ("Because the complaint in this case is so inadequately pled, it is not clear whether the forwarding service offered by GoDaddy is substantially similar to the `routing' service offered by NSI in Lockheed. If the two are the same, then [Plaintiff] Petronas will not succeed in its claim of contributory infringement, let alone the claim of infringement. Similarly, the cybersquatting claims will likely fail."). Plaintiff does not contest, refute, or even mention Go Daddy's explanation that the function of Go Daddy as alleged in the FAC is legally equivalent to the function of NSI in Lockheed. Instead, Plaintiff takes the untenable position that a registrar's routing function is not protected. This position is clearly contrary to well-established law, and thus the FAC must be dismissed. B. Routing of Internet Traffic Is a Protected Activity of Domain Name Registrars 1. The ACPA and Well-Established Case Law Make Clear that Domain Name Registrars Performing Their Registration and Routing Functions Are Not Cybersquatters

The Ninth Circuit has determined that a domain name registrar's routing function is not subject to direct or secondary liability for trademark violations. See Lockheed, 194. F.3d at 98485. The Court equated the routing activity of a registrar to the delivery service of the U.S. Postal Service: "[the domain name registrar] NSI does not supply the domain-name combination [Internet address] any more than the Postal Service supplies a street address by performing the routine service of routing mail." Though Lockheed pre-dates the ACPA, ACPA cases involving domain name registrars routinely refer to Lockheed. For example, in Bird v. Parsons, 289 F.3d -2REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

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865, 869 (6th Cir. 2002), the Sixth Circuit considered a trademark owner's claim against a domain name registrar, among others, and held that the registrar could not be held liable under the ACPA. The protected registration and routing functions of the domain name registrar were the same as articulated in Lockheed: "These [domain name] registrars screen the domain-name applications to make sure that the desired name is not already being used. In addition, the registrar maintains a directory that links domain names with their corresponding IP addresses." Bird v. Parsons, 289 F.3d at 869 (citing both the District Court and Ninth Circuit Lockheed decisions). These functions specifically include routing Internet traffic to the website of the registrant's choice: "An Internet user who seeks to access a website enters the domain-name combination that corresponds to the IP address, and he or she is then routed electronically to the computer that hosts that address." Id. See also, e.g., Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1112 (C.D. Cal. 2009) (in considering contributory liability under the ACPA, the "Ninth Circuit's analysis in Lockheed Martin I [is] instructive"). Plaintiff is unable to cite any case law to support its outlandish argument that a domain name registrar's routing activity subjects it to liability.3 As Plaintiff cannot cite to any support for its position, it attempts to ignore ten years of case law and re-interpret isolated language of Lockheed. In particular, Plaintiff tries to narrow or eliminate the clear result of Lockheed by taking two quotations out of context. First, the Lockheed Court notes that the domain name registrar was not involved in "linking domain names with potentially infringing resources such as websites." Opp. at 5 (quoting the District Court opinion in Lockheed, 985 F. Supp. 949, 961 (C.D. Cal. 1997). Plaintiff takes this statement to mean ­ in contradiction with the rest of the District

Plaintiff's refers to Verizon Cal. Inc. v. OnlineNIC, Inc., 647 F. Supp. 2d 1110 (N.D. Cal. 2009), Solid Host, and Lockheed II, but these cases do not support its position. None of these cases considered the routing function of a domain name registrar, let alone held it to be violative of the ACPA. Indeed, each of these cases confirm that a registrar acting in its purely passive capacity, i.e., one that does not offer any ancillary services in the particular case, is immune from ACPA liability. -3REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

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Court opinion and the Ninth Circuit opinion ­ that the domain name registrar's routing function is not a protected activity. However, when read in context, this statement clearly indicates that defendant NSI, like Go Daddy here, had no role in deciding to link the domain name at issue with the allegedly infringing website; the registrant alone made that decision, and then instructed the passive registrar to route Internet traffic accordingly: The registration of a domain name, without more, does not amount to infringement of a mark similar to the name. Infringing acts occur when a domain name is used in a Web site or other Internet form of communication in connection with goods or services. After a domain name is registered, NSI's involvement is over. NSI is not part of the process of linking domain names with potentially infringing resources such as Web sites. NSI does not require holders to use domain names for Web sites or any other form of Internet communication. Nor do domain name holders need NSI's permission to do so. Lockheed, 985 F. Supp. at 961-962 (internal citations omitted). Plaintiff also makes much of the isolated statement in Lockheed that "[a]fter a domain name is registered, NSI's involvement is over" (taken out of context from the quotation above). However, this statement too merely emphasizes that the domain name registrar was not involved in placing infringing content at the destination website, or in the decision to point a domain name to that website. The Lockheed Court clearly included NSI's routing function as part of the "registration" process, as it is during the same process that the registrant identifies the destination of Internet traffic for the domain name, most often by listing the domain name servers where the content is hosted. This information tells the registrar where the Internet traffic should be directed. See Order at 3 (in Lockheed, "`routing' was simply a `service' connected with the registration service."). All subsequent interpretations of this District Court opinion support this interpretation. The Ninth Circuit, the Bird v. Parsons Court, and this Court all read the Lockheed case as it is clearly written: to include the routing function as part of the protected activity of a domain name registrar. -4REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

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C.

Plaintiff Has Failed to State a Claim for Direct Cybersquatting

Even if the statutory safe harbor and well-established case law did not bar Plaintiff's claims (which they do), the FAC must be dismissed because Plaintiff has failed to state a claim for either direct or contributory cybersquatting. For direct cybersquatting, Plaintiff has failed to allege two of the three elements of the claim: (i) that Go Daddy "register[ed], traffic[ked] in, or use[d]" a domain name, (ii) with "bad faith intent to profit from [Plaintiff's] mark." 15 U.S.C. § 1125(d)(1)(A)(i)-(ii). See also, e.g., Bird v. Parsons, 289 F.3d 865, 880 (6th Cir. 2002) (describing elements of an ACPA claim); Lockheed Martin Corp. v. Network Solutions, Inc., (Lockheed II),141 F. Supp. 2d 648 (N.D. Tex. 2001) (same); Solid Host, 652 F. Supp. 2d at 1100-01 (same). 1. Plaintiff Has Not Alleged that Go Daddy Registered, Trafficked in, or Used the Domain Names

To plead a claim under the ACPA, Plaintiff must allege that Go Daddy registered, trafficked in, or used the domain names at issue (the "Domain Names"). Plaintiff argues only that Go Daddy "used" the Domain Names. See Opp. at 8-9. Plaintiff cites no authority, however, to establish that Go Daddy's routing function can be construed as a "use" of the domain name under the ACPA. Indeed, there is no indication that routing a domain name to the website of the registrant's choice, automatically and as instructed by the registrant, could constitute a "use" of the domain name by Go Daddy. Moreover, as Plaintiff admits, the statute itself limits liability for the "use" of a domain name to the registrant or the authorized licensee of the registrant. 15 U.S.C. § 1125(d)(1)(D); cited in Opp. at 8. Plaintiff contends that one sentence in the complaint establishes this authorized license: "on May 2009 [sic], the registrant used GoDaddy's online `dashboard' to instruct GoDaddy to use its Name Servers to direct anyone clicking on `petronastower.net' to be forwarded to a website containing highly offensive, obscene pornography." Opp. at 9 (quoting FAC ¶ 44). This activity does not come close to granting a license to use the domain name, and tellingly, Plaintiff cites no support for its conclusion. -5REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

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In fact, there is authority stating that such activity does not make a registrar the registrant's authorized licensee under the statute. The Court in Bird v. Parsons considered strikingly similar allegations, and held that they did not make the registrar defendant an "authorized licensee" of the registrant under the ACPA. See Bird v. Parsons, 289 F.3d at 881. In Bird, the third-party registrant registered the allegedly infringing domain name with the defendant domain name registrar, and directed the registrar to route Internet traffic to a parked page.4 See id. at 870. Based on these facts, the Court held that there were no allegations in the Complaint to establish that the domain name registrar was the registrant's "authorized licensee," and the plaintiff had not pleaded the "registration, trafficking, or use" prong of the ACPA against the domain name registrar. Id. at 881. 2. Plaintiff Has Not Alleged that Go Daddy Had a Bad Faith Intent to Profit from Plaintiff's Mark a. Bad Faith Intent to Profit is Not Pled in the FAC

The FAC does not mention a bad faith intent to profit.5 For this reason alone, the direct cybersquatting claim should be dismissed, as it is an essential element of an ACPA claim. See 15 U.S.C. § 1125(d)(1)(A)(i). Plaintiff admits that the FAC "does not use the words `bad faith' to described [sic] GoDaddy's intent to profit." Opp. at 10. Plaintiff attempts to excuse this omission by citation to a case holding: "a specific statute [need not] be named" in a complaint. Id. However, this action is not one where Plaintiff has failed to cite to the particular statute; Plaintiff Bird v. Parsons defines a "parked page" as follows: "In addition to acting as a registrar, [the registrar defendant] allows registrants to `park' their domain names on its `Futurehome page.' This service is useful for registrants who lack an Internet server to which the new domain name can be assigned." 289 F.3d at 870. As noted above, Plaintiff's Supplemental Material, filed two days after the opposition deadline, should be disregarded as untimely. The "supplemental" argument contends that the statutory safe harbor does not apply because Go Daddy had a bad faith intent to profit from the domain name registration. For the reasons stated in this section, the FAC contains no allegations of bad faith, and certainly no allegations of bad faith intent to profit from Plaintiff's trademark. Therefore, even if the Supplemental Material is not ignored outright, the argument should be disregarded. -6REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH
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has failed to plead the elements of a claim. Without an allegation of "bad faith intent to profit from [Plaintiff's] mark," the claim cannot stand. 15 U.S.C. § 1125(d)(1)(A)(i). See also Jones v. Cmty. Redevelopment Agency of the city of Los Angeles, 733 F. 2d 646, 649 (9th Cir. 1984) ("[A] pleading must `give[] fair notice and state[] the elements of the claim plainly and succinctly.'" (quoting 2A J. Moore & J. Lucas, Moore's Federal Practice ¶ 8.13 at 8-111 (2d Ed.1983)). b. Plaintiff Has Not Alleged Bad Faith Intent to Profit From its Mark

The FAC does not allege bad faith intent to profit from Plaintiff's trademark, as required by the ACPA. See 15 U.S.C. § 1125(d)(1)(A)(i). In apparent defense of this omission, Plaintiff constructs a false debate regarding whether the law requires allegations of bad faith intent to profit from the mark or from the goodwill associated with the mark. Opp. at 11. The distinction does not matter, as Plaintiff has not alleged either. The case on which Plaintiff relies, DSPT Int'l, Inc. v. Nahum, 624 F.3d 1213, 1218-19 (9th Cir. 2010), a case not involving a domain name registrar, concerned an individual domain name registrant who held a domain name hostage in order to gain leverage over a trademark holder. The Ninth Circuit held that even though this situation did not strictly reflect a bad faith intent to profit from the goodwill of the plaintiff's mark, as the prior case law had demanded, the defendant's conduct still constituted bad faith intent to profit from the plaintiff's trademark, as required by the statute. See id. No such distinction is necessary here. Regardless, Plaintiff has not pled bad faith intent to profit from any specific trademark. See, e.g., Lockheed II, 141 F. Supp. 2d at 654-55 (finding no liability in part because "[defendant Registrar did not have] `bad faith intent to profit from' specific marks.") (emphasis added) (citation omitted). Plaintiff argues further that various allegations in the FAC support bad faith on Go Daddy's part. These alleged acts of "bad faith," however, merely reflect Go Daddy's adherence to the judicially approved policy of staying out of domain name disputes. The law does not require

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Go Daddy to police the Internet. To do what Plaintiff asks would be financially devastating to Go Daddy, as it would be to any registrar. Defendant simply could not function as a registrar, or as keeper of the registry, if it had to become entangled in, and bear the expense of, disputes regarding the right of a registrant to use a particular domain name. The fact that defendant could theoretically do what plaintiff asks does not mean that defendant is obligated to do so at the risk of financial ruin. The reason the UDRP was developed was to provide the mechanism to resolve these disputes. Not only would imposing plaintiff's scheme render the UDRP nugatory, it would cause the domain name registration system in its entirety not to be feasible. Lockheed II, 141 F. Supp. 2d at 655. Plaintiff has also failed to allege facts to support any "intent to profit" by Go Daddy. In fact, the FAC alleges exactly the opposite: that Go Daddy does not receive any monetary compensation for providing its routing service or for registering domain names that were allegedly similar to the Plaintiff's marks. See FAC ¶¶ 69-70. Mere collection of standard registration fees does not constitute "intent to profit" under the ACPA. See, e.g., Solid Host, 652 F. Supp. 2d at 1110 (holding that "the only intent to profit alleged is linked to [defendant's] operation and promotion of its anonymity service," and that such allegation is insufficient to establish "intent to profit" under the ACPA). In its Opposition, Plaintiff argues that somehow the intent to profit can be inferred from the FAC as whole, without citing to any particular language that would support such an allegation. Opp. at 15.6 This argument is unfounded and illogical.

In this section of the Opposition, Plaintiff cites Webquest.com, Inc. v. Hayward Indus., 2010 U.S. Dist. LEXIS 1118188, at *6 (E.D. Cal. 2010), for the proposition that bad faith intent to profit from plaintiff's trademark is a factual question and not generally suited for judgment on the pleadings. Opp. at 15. Webquest, however, concerned pleadings that alleged facts which, if proven, could constitute bad faith. See 2010 U.S. Dist. LEXIS 1118188, at *6. Here, the FAC fails to plead any such facts. -8REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

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c.

The Nine "Bad Faith" Factors in the ACPA Are Inapplicable to This Case

The ACPA lists nine nonexclusive factors to assist the courts in evaluating whether a defendant who registered, trafficked in, or used a domain name did so with a bad faith intent to profit from the mark. 15 U.S.C. § 1125(d)(1)(B). Merely listing these factors demonstrates how inapplicable they are (and further underscores how Go Daddy's conduct does not constitute a "use" of the domain name under the ACPA): (i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to-- (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are -9REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

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famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c). Plaintiff argues that the first four factors weigh in its favor, as Go Daddy did not have any legitimate right to use the PETRONAS mark. Opp. at 13. This argument is absurd. Go Daddy registers domain names for third parties; it does not have or claim any "right" to use any trademarks contained in these 40 million or more domain names. Plaintiff's assertions that these factors "weigh" in its favor are obtuse at best, and maliciously misleading at worst. Plaintiff also argues that the "intent to divert customers" factor (Factor V) somehow "supports" a conclusion of bad faith. Opp. at 13. When examined in whole, the factor requires that the defendant intend to divert consumers "for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site." Plaintiff has made no allegations concerning such behavior, and could not assert any such allegations consistent with Rule 11. None of these factors bear on this case, and they certainly do not weigh in Plaintiff's favor. D. Plaintiff Has Failed to State a Claim for Contributory Cybersquatting

To try to bolster its contributory cybersquatting claim, Plaintiff merely rehashes its inaccurate dissection of the language in Lockheed. See Opp. at 16-17. Unfortunately for Plaintiff, no matter how many quotations from Lockheed it isolates and mutilates, the holding is still the same, and is still affirmed by the case law that followed. The FAC fails to allege that Go Daddy intentionally induced infringement, that Go Daddy exercised direct control and monitoring over the instrumentality that the Registrant used to engage in cybersquatting, or that Go Daddy had knowledge of the particular instance of cybersquatting. See Inwood Labs., Inc. v. Ives Labs., Inc., 456 US 844 (1982), Motion 15-18. The Lockheed court held that it would be "inappropriate to extend contributory liability to [a registrar] absent a showing that [it] had unequivocal knowledge that a domain name was being used to infringe a -10REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH

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trademark." 985 F. Supp. at 962. Assertions of infringement from a trademark owner are not enough to impart such knowledge, and the standard of knowledge for cybersquatting is even higher, because of the subjectivity of determining bad faith. See Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 647 (E.D. Mich. 2001). Plaintiff does not dispute that its own report to Go Daddy was the only notice Go Daddy had of accused infringement or cybersquatting, or that Lockheed establishes that such notice is insufficient. Plaintiff argues that Lockheed does not apply because "NSI [was] only involved in the registration of domain names, not in the use of domain names in connection with goods and services on the Internet." Opp. at 16 (quoting Lockheed, 985 F. Supp. at 961). But there is no allegation that Go Daddy uses domain names in connection with goods and services on the Internet; in fact, it does not. Plaintiff further argues that "NSI [did] not provide the other services needed to use the domain name in association with a website or other means of communication on the Internet. The services necessary to maintain a website . . . are provided by Internet service providers." Id. at 17. Again, there are no allegations that Go Daddy is an Internet Service Provider. Plaintiff's allegations cannot support a claim for contributory liability. E. Plaintiff's Unfair Competition Claim Falls with the Cybersquatting Claims

As the direct and contributory cybersquatting claims must be dismissed, the unfair competition claim must fail as well. See Denbicare U.S.A., Inc. v. Toys "R" Us, Inc., 84 F.3d 1143, 1152 (9th Cir. 1996) ("`[S]tate common law claims of unfair competition and actions pursuant to California Business and Professions Code § 17200 are `substantially congruent' to claims made under the Lanham Act' . . . Thus, since dismissal of [plaintiff's] Lanham Act claim was proper, dismissal of its § 17200 claim was proper as well") (citation omitted). See also Order at 9 (dismissing state law unfair competition claims in the original complaint in this case because "they [we]re based on the same factual allegations, and such claims are `substantially congruent' to claims made under the Lanham Act.") (quoting Denbicare).

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III.

CONCLUSION For the reasons stated above and in Go Daddy's Memorandum in Support of its Motion,

the Motion to Dismiss First Amended Complaint should be granted and Plaintiff's FAC should be dismissed, without leave to amend.

Dated: February 23, 2011

WILSON SONSINI GOODRICH & ROSATI Professional Corporation By: /s/ John L. Slafsky John L. Slafsky David E. Kramer Hollis Beth Hire .

Attorneys for Defendant Go Daddy.com, Inc.

-12REPLY IN FURTHER SUPPORT OF DEFENDANT'S MOTION TO DISMISS FIRST AMENDED COMPLAINT Case No: 09-CV-5939 PJH