Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 89

ANSWER to Amended Complaint --ANSWER TO FIRST AMENDED COMPLAINT -- DEMAND FOR JURY TRIAL -- byGoDaddy.com, Inc.. (Slafsky, John) (Filed on 5/19/2011)

1
2
3
4
5
6
7
8
9

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

10

NORTHERN DISTRICT OF CALIFORNIA

11
12
13

)
)
)
)
)
)
)
)
)
)
)
)
)

PETROLIAM NASIONAL BERHAD,
Plaintiff,

14

vs.

15

GODADDY.COM, INC.,

16

Defendant.

17
18
19

CASE NO: 09-CV-5939 PJH

ANSWER TO FIRST AMENDED
COMPLAINT
DEMAND FOR JURY TRIAL

Defendant GoDaddy.com, Inc. (“Go Daddy”), by and through its attorneys, hereby

20

answers the First Amended Complaint (“Complaint”) of Plaintiff Petroliam Nasional Berhad

21

(“Petronas”) as follows:

22
23
24
25

THE PARTIES
1.

in paragraph 1 of the Complaint and on that basis denies them.
2.

26
27
28

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

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

3.

Go Daddy admits that this action purportedly arises under the Lanham Act and that

the Court has subject matter jurisdiction over the claims asserted in the Complaint. Go Daddy
3885390_1.

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

1

lacks sufficient knowledge to admit or deny the remaining allegations set forth in paragraph 3 of

2

the Complaint and on that basis denies them.

3

4.

Go Daddy denies the allegations as set forth in paragraph 4 of the Complaint.

4

5.

Go Daddy denies the allegations as set forth in paragraph 5 of the Complaint.

5
6

INTRADISTRICT ASSIGNMENT
6.

Go Daddy admits the allegations as set forth in paragraph 6 of the Complaint.

7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24

FACTUAL ALLEGATIONS
7.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

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

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 8 of the Complaint and on that basis denies them.
9.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 9 of the Complaint and on that basis denies them.
10.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 10 of the Complaint and on that basis denies them.
11.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 11 of the Complaint and on that basis denies them.
12.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

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

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 13 of the Complaint and on that basis denies them.
14.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 14 of the Complaint and on that basis denies them.
15.

Go Daddy admits that according to the official website for the Internet Corporation

25

for Assigned Names and Numbers (ICANN), ICANN is responsible for managing and

26

coordinating the Domain Name System. Go Daddy denies the remaining allegations set forth in

27

paragraph 15 of the Complaint.

28
-2ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1

16.

Go Daddy admits that Verisign is the registry operator for “.com” and “.net”

2

domain names. Go Daddy denies the remaining allegations set forth in paragraph 16 of the

3

Complaint. The “Registry Agreement” speaks for itself.

4

17.

Go Daddy admits that Verisign maintains a database of registered”.net” domain

5

names and any Internet Protocol addresses provided for issued “.net” domain names. Go Daddy

6

denies the remaining allegations set forth in paragraph 17 of the Complaint.

7

18.

Go Daddy admits that Verisign receives information about domain name

8

registrations from registrars, and that registrars enter into registration accreditation agreements

9

with ICANN. Go Daddy denies the remaining allegations set forth in paragraph 18 of the

10
11
12
13

Complaint. The agreements speak for themselves.
19.

Go Daddy admits that it has entered into a registrar accreditation agreement with

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 19 of the Complaint.
20.

Go Daddy admits that it has entered into a registrar accreditation agreement with

14

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 20 of the Complaint.

15

The agreement speaks for itself.

16

21.

Go Daddy admits that it has entered into a registrar accreditation agreement with

17

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 21 of the Complaint.

18

The agreement speaks for itself.

19

22.

Go Daddy admits that it has entered into a registrar accreditation agreement with

20

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 22 of the Complaint.

21

The agreement speaks for itself.

22

23.

Go Daddy admits that it has entered into a registrar accreditation agreement with

23

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 23 of the Complaint.

24

The agreement speaks for itself.

25

24.

Go Daddy admits that it has entered into a registrar accreditation agreement with

26

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 24 of the Complaint.

27

The agreement speaks for itself.

28
-3ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1

25.

Go Daddy admits that it has entered into a registrar accreditation agreement with

2

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 25 of the Complaint.

3

The agreement speaks for itself.

4

26.

Go Daddy admits that it has entered into a registrar accreditation agreement with

5

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 26 of the Complaint.

6

The agreement speaks for itself.

7

27.

Go Daddy denies the allegations set forth in paragraph 27 of the Complaint.

8

28.

Go Daddy admits that it offers a domain name hosting service. Go Daddy denies

9
10
11

the remaining allegations set forth in paragraph 28 of the Complaint.
29.

Go Daddy admits that it offers a domain name forwarding service. Go Daddy

denies the remaining allegations set forth in paragraph 29 of the Complaint.

12

30.

Go Daddy denies the allegations set forth in paragraph 30 of the Complaint.

13

31.

Go Daddy admits the allegations set forth in paragraph 31 of the Complaint.

14

32.

Go Daddy admits that it entered into a domain name registration agreement with

15

the registrant of the <petronastower.net> and <petronastowers.net> domain names. Go Daddy

16

denies the remaining allegations set forth in paragraph 32 of the Complaint.

17
18
19
20
21
22
23
24
25
26
27
28

33.

Go Daddy admits that ICANN has a registrar transfer dispute resolution policy. Go

Daddy denies the remaining allegations set forth in paragraph 33 of the Complaint.
34.

Go Daddy admits that it has a trademark and/or copyright infringement policy. Go

Daddy denies the remaining allegations set forth in paragraph 34 of the Complaint.
35.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 35 of the Complaint and on that basis denies them.
36.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 36 of the Complaint and on that basis denies them.
37.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 37 of the Complaint and on that basis denies them.
38.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 38 of the Complaint and on that basis denies them.
-4ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1
2
3
4
5

39.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

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

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 40 of the Complaint and on that basis denies them.
41.

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

6

domain name <petronastower.net>. Go Daddy denies the remaining allegations set forth in

7

paragraph 41 of the Complaint.

8
9

42.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

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

10

43.

Go Daddy admits the allegations set forth in paragraph 43 of the Complaint.

11

44.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

12
13

in paragraph 44 of the Complaint and on that basis denies them.
45.

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

14

domain name <petronastower.net>. Go Daddy denies the remaining allegations set forth in

15

paragraph 45 of the Complaint.

16

46.

Go Daddy admits that it sent an e-mail message concerning the domain name

17

<petronastower.net> on or about December 1, 2009. Go Daddy denies the remaining allegations

18

set forth in paragraph 46 of the Complaint.

19

47.

Go Daddy admits that it was contacted on December 14, 2009 concerning the

20

domain name <petronastower.net>. Go Daddy denies the remaining allegations set forth in

21

paragraph 47 of the Complaint.

22

48.

Go Daddy admits that it was contacted concerning the domain name

23

<petronastower.net> on December 16, 2009. Go Daddy denies the remaining allegations set forth

24

in paragraph 48 of the Complaint.

25

49.

Go Daddy admits that on December 16, 2009 it sent an e-mail message concerning

26

the domain name <petronastower.net>. Go Daddy denies the remaining allegations set forth in

27

paragraph 49 of the Complaint.

28
-5ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1
2
3

50.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 50 of the Complaint and on that basis denies them.
51.

Go Daddy admits that plaintiff requested a temporary restraining order of

4

December 18, 2009, and that the request was denied on December 23, 2009. Go Daddy denies the

5

remaining allegations set forth in paragraph 51 of the Complaint.

6

52.

Go Daddy admits that plaintiff filed an in rem action against the domain name

7

<petronastower.net> on January 29, 2010, and that the in rem action resulted in an order

8

transferring the domain name <petronastowner.net> to plaintiff on May 13, 2010. Go Daddy

9

denies the remaining allegations set forth in paragraph 52 of the Complaint.

10

53.

Go Daddy admits that it was the registrar of the domain name

11

<petronastowers.net>. Go Daddy denies the remaining allegations set forth in paragraph 53 of the

12

Complaint.

13

54.

Go Daddy admits that it was contacted on July 7, 2010 concerning the domain

14

name <petronastowers.net>. Go Daddy admits that it sent an e-mail message concerning the

15

domain name <petronastowers.net> on July 8, 2010. Go Daddy denies the remaining allegations

16

set forth in paragraph 54 of the Complaint.

17

55.

Go Daddy admits that plaintiff filed an in rem action against the domain name

18

<petronastowers.net> on July 12, 2010, and that the in rem action resulted in an order transferring

19

the domain name <petronastowers.net> to plaintiff on August 27, 2010. Go Daddy denies the

20

remaining allegations set forth in paragraph 55 of the Complaint.

21

56.

Go Daddy admits the allegations set forth in paragraph 56 of the Complaint.

22

57.

Go Daddy denies the allegations set forth in paragraph 57 of the Complaint.

23

58.

Go Daddy denies the allegations set forth in paragraph 58 of the Complaint.

24

COUNT ONE

25

Cybersquatting Under 15 U.S.C. §1125(d)

26
27

59.

Go Daddy incorporates by reference its responses to paragraphs 1 through 58,

inclusive, as if fully set forth herein.

28
-6ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1
2
3
4
5
6

60.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 60 of the Complaint and on that basis denies them.
61.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 61 of the Complaint and on that basis denies them.
62.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 62 of the Complaint and on that basis denies them.

7

63.

Go Daddy denies the allegations as set forth in paragraph 63 of the Complaint.

8

64.

Go Daddy denies the allegations as set forth in paragraph 64 of the Complaint.

9

65.

Go Daddy denies the allegations as set forth in paragraph 65 of the Complaint.

10

66.

Go Daddy denies the allegations as set forth in paragraph 66 of the Complaint

11

67.

Go Daddy denies the allegations as set forth in paragraph 67 of the Complaint.

12

68.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

13
14
15
16

in paragraph 68 of the Complaint and on that basis denies them.
69.

Go Daddy admits that it does not charge a fee for its domain name forwarding

service. Go Daddy denies the remaining allegations set forth in paragraph 69 of the Complaint.
70.

Go Daddy admits that it charges registrants in general, and the registrant of the

17

<petronastower.net> and <petronastowers.net> domain names in particular, a standard registration

18

fee that does not relate in any way to any trademark rights of plaintiff or anyone else. Go Daddy

19

denies the remaining allegations set forth in paragraph 70 of the Complaint.

20

71.

Go Daddy admits that every year hundreds of proceedings under the Uniform

21

Domain Name Dispute Resolution Policy have been filed concerning the domain names that are

22

registered with Go Daddy. Go Daddy denies the remaining allegations set forth in paragraph 71.

23

72.

Go Daddy denies the allegations set forth in paragraph 72 of the Complaint.

24

73.

Go Daddy denies the allegations set forth in paragraph 73 of the Complaint.

25

74.

Go Daddy denies the allegations set forth in paragraph 74 of the Complaint.

26

75.

Go Daddy denies the allegations set forth in paragraph 75 of the Complaint.

27

76.

Go Daddy denies the allegations set forth in paragraph 76 of the Complaint.

28
-7ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1

COUNT TWO

2

Contributory Liability for Cybersquatting

3
4
5
6

77.

Go Daddy incorporates by reference its responses to paragraphs 1 through 76,

inclusive, as through fully set forth herein.
78.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 78 of the Complaint and on that basis denies them.

7

79.

Go Daddy denies the allegations set forth in paragraph 79 of the Complaint.

8

80.

Go Daddy denies the allegations set forth in paragraph 80 of the Complaint.

9

81.

Go Daddy denies the allegations set forth in paragraph 81 of the Complaint.

10

82.

Go Daddy denies the allegations set forth in paragraph 82 of the Complaint.

11

83.

Go Daddy denies the allegations set forth in paragraph 83 of the Complaint.

12

84.

Go Daddy denies the allegations set forth in paragraph 84 of the Complaint.

13

85.

Go Daddy denies the allegations set forth in paragraph 85 of the Complaint.

14

86.

Go Daddy denies the allegations set forth in paragraph 86 of the Complaint.

15

87.

Go Daddy denies the allegations set forth in paragraph 87 of the Complaint.

16

88.

Go Daddy denies the allegations set forth in paragraph 88 of the Complaint.

17

89.

Go Daddy denies the allegations set forth in paragraph 89 of the Complaint.

18

90.

Go Daddy denies the allegations set forth in paragraph 90 of the Complaint.

19

91.

Go Daddy denies the allegations set forth in paragraph 91 of the Complaint.

20

92.

Go Daddy denies the allegations set forth in paragraph 92 of the Complaint.

21

93.

Go Daddy admits that it does not claim ownership of the PETRONAS trademark.

22
23

Go Daddy denies the remaining allegations set forth in paragraph 93 of the Complaint.
94.

Go Daddy admits that its legal name is not incorporated in the <petronastower.net>

24

or <petronastowers.net> domain names. Go Daddy denies the remaining allegations set forth in

25

paragraph 94 of the Complaint.

26

95.

Go Daddy denies the allegations set forth in paragraph 95 of the Complaint.

27

96.

Go Daddy denies the allegations set forth in paragraph 96 of the Complaint.

28
-8ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1

COUNT THREE

2

Unfair Competition under California Bus. & Prof. Code § 17200

3

and California Common Law

4
5

97.

Go Daddy incorporates by reference its responses to paragraphs 1 through 96,

inclusive, as though fully set forth herein.

6

98.

Go Daddy denies the allegations set forth in paragraph 98 of the Complaint.

7

99.

Go Daddy denies the allegations set forth in paragraph 99 of the Complaint.

8

100.

Go Daddy denies the allegations set forth in paragraph 100 of the Complaint.

9

101.

Go Daddy denies the allegations set forth in paragraph 101 of the Complaint.

10

AFFIRMATIVE AND OTHER DEFENSES

11

Go Daddy alleges the following affirmative and other defenses, reserving the right to

12

modify, amend, and/or expand upon these defenses as discovery proceeds.

13

FIRST AFFIRMATIVE DEFENSE

14

102.

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

15

relief can be granted.

16
17
18

SECOND AFFIRMATION DEFENSE
103.

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

domain name registrars. 15 U.S.C. §1114.

19

THIRD AFFIRMATIVE DEFENSE

20

104.

21

estoppel and laches.

22
23

FOURTH AFFIRMATIVE DEFENSE
105.

24
25

28

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

106.

26
27

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

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

107.

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

material facts.
-9ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1
2
3

SEVENTH AFFIRMATIVE DEFENSE
108.

Plaintiff’s alleged trademark and alleged trademark registration are invalid, and

therefore cannot support plaintiff’s claims.

4
5

EIGHTH AFFIRMATIVE DEFENSE
109.

Plaintiff lacks standing to bring these claims.

6
7
8

NINTH AFFIRMATIVE DEFENSE
110.

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

damages, if any.

9
10
11

TENTH AFFIRMATIVE DEFENSE
111.

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

indispensable party as defendant in this action.

12
13

PRAYER FOR RELIEF
WHEREFORE, Go Daddy prays for judgment in its favor as follows:

14
15

a.

That the Court deny the Complaint in its entirety, with prejudice, and

specifically deny each and every prayer for relief contained therein;

16

b.

That the Court award Go Daddy its reasonable costs, disbursements, and

17

attorneys’ fees incurred in this action, to the extent permitted by law, including but not limited to

18

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

19

c.

20

and equitable.

21

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

Dated: May 19, 2011

22
23

WILSON SONSINI GOODRICH & ROSATI
Professional Corporation

By:

24

/s/ John L. Slafsky

.

John L. Slafsky
David E. Kramer
Hollis Beth Hire

25
26

Attorneys for Defendant
GoDaddy.com, Inc.

27
28

-10ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

1
2
3

DEMAND FOR JURY TRIAL
Defendant Go Daddy hereby demands a trial by jury of this action pursuant to Federal Rule
of Civil Procedure 38 and Civil L.R. 3-6.

4
5

Dated: May 19, 2011

6
7

WILSON SONSINI GOODRICH & ROSATI
Professional Corporation

By:

8
9
10

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

.

Attorneys for Defendant
GoDaddy.com, Inc.

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

3885390_1.

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