Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 90

THIRD JOINT CASE MANAGEMENT STATEMENT filed by Petroliam Nasional Berhad, GoDaddy.com, Inc.. (Clark, Perry) (Filed on 5/19/2011) Modified on 5/20/2011 (vlk, COURT STAFF).

1 PERRY R. CLARK, State Bar No. 197101
LAW OFFICES OF PERRY R. CLARK
2 825 San Antonio Road
Palo Alto, CA 94303
3 Telephone: [phone]
Facsimile: [phone]
4 [e-mail]
5 Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD
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7 JOHN L. SLAFSKY, State Bar No. 195513
DAVID H. KRAMER, State Bar No. 168452
8 HOLLIS BETH HIRE, State Bar No. 203651
WILSON SONSINI GOODRICH & ROSATI
9 Professional Corporation
650 Page Mill Road
10 Palo Alto, CA 94304-1050
Telephone: [phone]
11 Facsimile: [phone]
[e-mail]
12 [e-mail]
[e-mail]
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14 Attorneys for Defendant
GODADDY.COM, INC.
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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18 PETROLIAM NASIONAL BERHAD,
Plaintiff,

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vs.

21 GODADDY.COM, INC.,
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Defendant.

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CASE NO: 09-CV-5939 PJH

THIRD JOINT CASE
MANAGEMENT STATEMENT
Date: May 26, 2011, 2:00 p.m.

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THIRD JOINT CASE MANAGEMENT STATEMENT
Case No: 09-CV-5939 PJH

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On May 5, 2011, the Court denied Defendant GoDaddy.com, Inc.’s (“Defendant’s” or

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“Go Daddy’s”) motion to dismiss the amended complaint of Plaintiff Petroliam Nasional Berhad

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(“Plaintiff” or “Petronas”) and ordered that a case management conference be held on May 26,

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2011. Pursuant Civil L.R. 16-10(d), the parties jointly submit this Third Case Management

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Statement and (1) report on the progress of the case and changes since the Second Joint Case

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Management Statement was filed on July 14, 2010, (2) make certain proposals for the

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management of the remainder of the case, and (3) report their views about whether using some

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form of ADR would be appropriate. Copies of the parties two previous case management

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statements are attached hereto as Exhibits A and B.

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I.

PROGRESS AND CHANGES SINCE JULY 14, 2010 STATEMENT

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A.

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1.

The parties exchanged initial disclosures on July 15, 2010.

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2.

On August 3, 2010, Defendant filed a motion for judgment on the pleadings and

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Summary of Proceedings Since Last Statement

for an order finding plaintiff liable for attorneys’ fees. (Doc. No. 50).
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On August 5, 2010, the Court conducted the second case management

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conference and issued civil minutes stating that “[t]he Court will set a pretrial schedule for this

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case after it rules on the pending motion to dismiss.” (Doc. No. 52).

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4.

On September 9, 2010, the Court issued an order granting the motion to dismiss

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with leave to file an amended complaint by September 29, 2010 and (1) “referring this matter for

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a mandatory settlement conference, to be held within the next 4 to 6 weeks, (2) ordering that

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“[t]he case is stayed pending the settlement conference (except for the filing of the amended

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complaint),” and (3) ordering that, “[i]n the event the parties fail to settle, GoDaddy’s answer or

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motion to dismiss shall be filed no later than 21 days after the conclusion of the settlement

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process.” (Doc. No. 67).
-2THIRD JOINT CASE MANAGEMENT STATEMENT
Case No: 09-CV-5939 PJH

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5.

On September 29, 2010, Plaintiff filed its amended complaint. (Doc. No. 69).

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6.

On October 18, 2010, the Hon. Magistrate Judge Joseph C. Spero conducted a

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settlement conference with the parties. (Doc. No. 73).

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7.

On December 9, 2010, Judge Spero conducted a further settlement conference

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with the parties. (Doc. No. 75). On December 10, 2010, Judge Spero issued a Civil Minute

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Order reporting that the “[c]ase did not settle.” (Id.).

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8.

The parties stipulated to extend the time for Defendant to respond to the

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amended complaint to January 31, 2011 (Doc. 76) and on that date Defendant filed a motion to

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dismiss the complaint. (Doc. No. 77).

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9.

On May 5, 2011, the Court denied Defendant’s motion to dismiss. (Doc. No.

87).

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B.

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Since the parties filed their second Case Management Statement on July 14, 2010, this

Plaintiff’s View of Progress and Changes Since Last Statement

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case has changed in two significant respects. First, the number of causes of action asserted

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against GoDaddy has been reduced from eight to three: direct cybersquatting, contributory

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cybersquatting, and unfair competition under Californis Bus. and Prof. Code section 17200.

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Second, the Court’s May 5, 2011 Order denying Defendant’s second motion to dismiss based on

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the so-called “safe harbor” defense contains clear directions regarding the “developed record”

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that will be needed to resolve the main issues in this case. As a result, the scope of discovery

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should be tightly focused and allow for the completion of discovery in no more than three

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months.

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C.

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Since July 14, 2010, the following events have occurred:

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Defendant’s View of Progress and Changes Since Last Statement

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On September 9, 2010, the second (and last) of Plaintiff’s in rem proceedings

-3THIRD JOINT CASE MANAGEMENT STATEMENT
Case No: 09-CV-5939 PJH

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against the disputed domain names terminated, resulting in transfer of both

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disputed domain names to Plaintiff.

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On August 3, 2010, Go Daddy filed a motion for judgment on the pleadings and

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for an award of attorneys’ fees. The Court granted the motion with leave to

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amend on September 9, 2010.

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On September 29, 2010, Plaintiff filed the First Amended Complaint, dropping

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claims for trademark infringement, contributory trademark infringement,

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trademark dilution, and false designation of origin. The First Amended

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Complaint alleged only cybersquatting, contributory cybersquatting, and state law

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unfair competition claims, and prays only for declaratory relief and damages

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(injunctive relief is moot, as Plaintiff now controls both disputed domain names

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as a result of the in rem proceedings).

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Magistrate Judge Spero. The case did not settle.
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In October and December, the parties attended settlement conferences with

On January 31, 2011, Go Daddy filed a motion to dismiss the first amended
complaint.

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On May 5, 2011, the Court denied the motion, stating “the court requires a record

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clarifying the mechanics of what GoDaddy did or does with regard to the disputed

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domain names, and what ‘forwarding’ or ‘routing’ are and whether either or both

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can be considered part of domain name registration services generally or the

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services offered by GoDaddy.” In this Order, the Court set a further case

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management conference for May 26, 2011.

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-4THIRD JOINT CASE MANAGEMENT STATEMENT
Case No: 09-CV-5939 PJH

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II.

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PROPOSALS FOR THE MANAGEMENT OF THE REMAINDER OF THE CASE
The parties make the following proposals for the management of the remainder of the

case:

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A.

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The Plaintiff proposes that the Court enter a Case Management Order containing the

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Plaintiff’s Proposals

following:

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Last Day to Amend Pleadings and Join of Parties: June 10, 2011

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Last Day to Designate Expert Witnesses: June 17, 2011

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Civil L.R. 26-2 Discovery “Cut-Off”: August 26, 2011.

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Last Day for Hearing of Dispositive Motions: September 30, 2011

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Pretrial Conference: October 28, 2011

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Trial: November 13, 2011. This case will be tried to a jury a jury, and the expected
length of the trial is four days.

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Plaintiff was not able to agree to Defendant’s proposal for “staged discovery” because it is
unnecessary and will simply delay resolution of this case.
First, GoDaddy’s proposal contemplates a “first stage of discovery” limited to the issue of

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whether “Go Daddy’s activities and function with respect to the disputed domain names was

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protected activity” that would be followed by motions for summary judgment and, eventually, a

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“second stage of discovery” and more motions for summary judgment. According to the Court’s

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Pretrial Instructions, however, “[o]nly one summary judgment motion may be filed by each side.”

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(emphasis original). It would make no sense, and be grossly unfair, to require the Plaintiff to file

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its single motion for summary while discovery is stayed on all issues except GoDaddy’s “safe

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harbor” defense and GoDaddy has not requested—much less identified any grounds that would

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support—leave of Court for the parties to file multiple motions for summary judgment.
-5THIRD JOINT CASE MANAGEMENT STATEMENT
Case No: 09-CV-5939 PJH

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Second, the information within the scope of GoDaddy’s “first stage”—namely,

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information regarding whether “Go Daddy’s activities and function with respect to the disputed

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domain names was protected activity”—is within GoDaddy’s control and possession and should

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already have been produced as part of its initial disclosures under Fed. R. Civ. P. 26(a)(1)(a)(ii).

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Even though it was not, there is no reason why the Court should issue what amounts to a

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protective order staying discovery on all issues but one so that GoDaddy can provide the discovery

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that it claims will support its “safe harbor” defense. There is simply no reason why discovery on

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all issues cannot be completed during a single “stage of discovery” and GoDaddy has not

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identified such a reason—much less shown the “good cause” that would be required for the Court

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to issue a protective order limiting discovery to the “stages” GoDaddy proposes.
Third, GoDaddy specifically excludes from its “first stage of discovery” the issue of

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“whether Go Daddy had a bad faith intent to profit from Plaintiff’s mark.” Because the so-called

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“safe harbor” for domain name registrars does not apply if the registrar acted in “bad faith,”

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summary judgment on the “safe harbor” would be inappropriate if discovery is limited to

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GoDaddy’s proposed “first stage.” As such, there is simply no reason to delay discovery into all

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relevant areas pending completion of GoDaddy’s proposed first stage.

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Finally, with respect to GoDaddy’s observation that Plaintiff’s schedule “would require

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filing of dispositive motions before the close of discovery,” GoDaddy fails to show why this

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would warrant rejecting Plaintiff’s proposed schedule. There is no reason why any party should

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wait until the close of fact discovery to obtain discovery it may feel it needs for dispositive

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motions and GoDaddy fails to offer any reason why it feels it would be unable to complete the

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discovery it may need under the schedule proposed by Plaintiff.

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B.

Defendant’s Proposals

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1.

Schedule

-6THIRD JOINT CASE MANAGEMENT STATEMENT
Case No: 09-CV-5939 PJH

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Go Daddy notes that the schedule above would require filing of dispositive motions before
the close of discovery. Go Daddy proposes the following schedule:
Expert designation: July 1, 2011

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Limited Discovery cutoff: August 5, 2011

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Dispositive motion filing: September 14, 2011
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Hearing on dispositive motions: October 19, 2011

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Go Daddy requests that, if the dispositive motion or motions are denied, the Court set
another Case Management Conference to set dates for the next stage of discovery and trial.
2.

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Go Daddy proposes staged discovery to allow for an early motion for summary judgment

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Scope of limited discovery in the first stage

on the issue of whether Go Daddy’s activities and function with respect to the disputed domain
names was protected activity of a domain name registrar under the relevant statutory and case law.

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Discovery on this issue, in the form of one set of interrogatories, production of documents related
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to the disputed domain names, production of documents related to the services Go Daddy provided

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with respect to the disputed domain names, and one Rule 30(b)(6) deposition would be completed

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by August 5, 2011, in anticipation of filing a motion for summary judgment on the issue by

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September 14, 2011.
If the motion for summary judgment is denied, Go Daddy reserves the right to request

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discovery on additional topics, and there are numerous other issues that would be relevant at that
point (i.e., whether Plaintiff has valid trademark rights in the PETRONAS mark, and whether Go

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Daddy had a bad faith intent to profit from Plaintiff’s mark, among others).
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III.

PARTIES VIEWS REGARDING ADR
A.

Plaintiff’s View

Although the case did not settle, Judge Spero was very effective as a mediator and has
become familiar with the case as a result of presiding over two mediation sessions with the parties.

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-7THIRD JOINT CASE MANAGEMENT STATEMENT
Case No: 09-CV-5939 PJH

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As a result, the Plaintiff believes that a further settlement conference before Judge Spero would

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likely be productive.

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B.

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Go Daddy has participated in two settlement conferences to date. Go Daddy does not

Defendant’s View

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believe that further settlement conferences or ADR would be productive.

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Dated: May 19, 2011

LAW OFFICES OF PERRY R. CLARK

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By:

/s/ Perry R. Clark
Perry R. Clark

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Dated: May 19, 2011

Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD
(PETRONAS)
WILSON SONSINI GOODRICH & ROSATI
Professional Corporation

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

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Attorneys for Defendant
GODADDY.COM, INC.

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SIGNATURE ATTESTATION

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I, Perry Clark, hereby attest that all signatories to this document have consented to the efiling of this document.

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Dated: May 19, 2011

By:

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-8THIRD JOINT CASE MANAGEMENT STATEMENT
Case No: 09-CV-5939 PJH

/s/ Perry Clark
Perry Clark