Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 98

RESPONSE (re 93 MOTION to Strike All Affirmative Defenses in Defendant GoDaddy's Answer to Amended Complaint ) Defendant's Opposition to Plaintiff's Motion to Strike Affirmative Defenses filed byGoDaddy.com, Inc.. (Slafsky, John) (Filed on 7/12/2011)

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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
GoDaddy.com, Inc.
UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA
PETROLIAM NASIONAL BERHAD,
Plaintiff,

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vs.
GODADDY.COM, INC.,
Defendant.

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I.

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CASE NO: 09-CV-5939 PJH
DEFENDANT’S OPPOSITION TO
PLAINTIFF’S MOTION TO
STRIKE AFFIRMATIVE
DEFENSES
Date: August 3, 2011
Time: 9:00 a.m.
Judge: Hon. Phyllis J. Hamilton

INTRODUCTION

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The motion of Plaintiff Petroliam Nasional Berhad (“Petronas”) to strike Go Daddy’s

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affirmative defenses is ill-conceived and should be denied. In any event, the motion is moot, as

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Defendant GoDaddy.com, Inc. (“Go Daddy”) has submitted a motion for leave to amend its

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answer to, among other things, provide in the pleading the very factual statements Petronas

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claims are lacking (see pending motion at Dkt #94, and supporting declaration with proposed

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Amended Answer at Dkt #95, Exhibit A). For these reasons, Petronas should withdraw its

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motion1; if Petronas continues to decline to withdraw the motion, the Court should deny the

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Go Daddy has contacted Petronas’ counsel twice about withdrawing the motion or, if
Petronas will not agree to withdraw the motion, consenting to modifying the hearing date so the
inter-dependant motions – Petronas’ motion to strike affirmative defenses and Go Daddy’s
(continued...)
DEF’S. OPP. TO MOTION TO STRIKE AFF. DEFENSES
Case No: 09-CV-5939 PJH

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motion to strike and enter Go Daddy’s proposed amended Answer.

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II.

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LEGAL STANDARD
“The key to determining the sufficiency of pleading an affirmative defense is whether it

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gives plaintiff fair notice of the defense.” Simmons v. Navajo County, Arizona, 609 F3d 1011,

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1023 (9th Cir. 2010) (citing Wyshak v. City Nat'l Bank, 607 F.2d 824, 827 (9th Cir.1979) and In

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re Gayle Sterten, 546 F.3d 278, 285 (3d Cir. 2008) (noting that “the proper focus of our inquiry”

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is whether the plaintiff was “specifically deprived [] of an opportunity to rebut that defense or to

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alter [] litigation strategy accordingly”)).

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III.

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PETRONAS HAD AND HAS “FAIR NOTICE” OF GO DADDY’S DEFENSES
There is no credible argument that Petronas is surprised by any of the affirmative

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defenses included in Go Daddy’s original Answer. Go Daddy filed two detailed motions to

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dismiss Petronas’ complaints, and the parties have participated in multiple status conferences in

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this case and in the two related in rem proceedings that resulted in the transfer of the two

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disputed domain names to Petronas. Go Daddy also petitioned the U.S. Patent and Trademark

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Office to cancel Petronas’ trademark registration on July 12, 2010, and the parties have actively

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litigated the Trademark Cancellation Action for a year. See Wyshak, 607 F.2d at 827 (holding

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that argument in motion gave adequate additional information to supplement affirmative

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defense).

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Regardless, in its proposed Amended Answer Go Daddy has supplemented the

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affirmative defenses with additional facts (even though Petronas was already aware of these

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facts, from the multiple motions, hearings, and status conferences in this case, as well as the

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Trademark Cancellation Action). These amendments cover any possible issue Petronas may

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(...continued from previous page)
motion for leave to amend its answer – can be heard on the same day. See Declaration of Hollis
Beth Hire (“Hire Decl.”), ¶ 2, Ex. 1. Petronas has not agreed to either request, so the hearing
dates for the motions are still set a week apart (August 3 and August 10). See id. For the sake of
efficiency, Go Daddy respectfully requests that the Court move the hearing date for one or both
motions, so they can be heard on the same day.
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DEF’S. OPP. TO MOTION TO STRIKE AFF. DEFENSES
Case No: 09-CV-5939 PJH

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perceive. 2 Petronas has still not agreed that its motion is moot, however, so Go Daddy is

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compelled to remark on the sufficiency of each affirmative defense in this opposition. They are

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taken in turn below.

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First Affirmative Defense: The Complaint, and each claim asserted within it, fails to

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state a claim upon which relief can be granted. This affirmative defense has been explained

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exhaustively in Go Daddy’s motion for judgment on the pleadings filed August 3, 2010 (Dkt

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#50), its reply in support of the motion filed August 25, 2010 (Dkt #57), its motion to dismiss

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filed January 31, 2011 (Dkt #77), and its reply in support of that motion filed February 23, 2011

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(Dkt #81). Though the Court did not dismiss all of Petronas’ claims in response to Go Daddy’s

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motions, Go Daddy continues to believe that Petronas’ complaint fails to state a claim, for the

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reasons set forth in the motions. Indeed, the Court has even stated that the court has “certain

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reservations concerning the adequacy of the pleading . . . .” See Court Order of May 5, 2011, at

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1 (Dkt # 87).

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Petronas is well aware of these arguments, and the affirmative defense provides ample

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notice to Petronas of Go Daddy’s defense. Furthermore, Petronas has cited no authority that

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requires further explanation of an affirmative defense that the complaint fails to state a claim

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upon which relief can be granted, even in circumstances where there has been no motion

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practice, hearings, and status conferences to educate the plaintiff as to the many arguments

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supporting the defense.

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Second Affirmative Defense: The Complaint is barred, in whole or in part, by the

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Lanham Act safe harbor for domain name registrars. 15 U.S.C. §1114. Again, the arguments

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further clarifying this affirmative defense are set forth in detail in Go Daddy’s motions for

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judgment on the pleadings and its motion to dismiss. Regardless, this affirmative defense is

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straightforward and even sets forth the relevant statute. Petronas provides no reason or authority

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Though Petronas’ motion broadly requests that all affirmative defenses be stricken,
Petronas only addresses four of the affirmative defenses specifically: the affirmative defense
asserting waiver, laches, and acquiescence; the defense of failure to mitigate damages; the
defense concerning the Lanham Act safe harbor for registrars; and the defense that the complaint
fails to state a claim upon which relief can be granted. See Motion to Strike at 5.
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DEF’S. OPP. TO MOTION TO STRIKE AFF. DEFENSES
Case No: 09-CV-5939 PJH

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to challenge this affirmative defense, and indeed none exists.

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Third Affirmative Defense: The Complaint is barred, in whole or in part, by the

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equitable doctrines of waiver, estoppel and laches. On information and belief, the domain names

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at issue were registered in 2003, and have pointed to pornographic content since that time. On

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information and belief, Petronas waited until 2009 to take any action with regard to one of the

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domain names at issue and waited until 2010 to take action with regard to the other domain name

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at issue. Go Daddy’s proposed amended affirmative defense, restating facts and arguments

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presented as early as Go Daddy’s opposition to Petronas’ request for a temporary restraining

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order in December 2009 (Dkt #12), contains ample explanation to provide “fair notice” of the

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defense.

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Fourth Affirmative Defense: The Complaint is barred, in whole or in part, by the

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doctrine of acquiescence. On information and belief, Petronas did not take any action with

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regard to the domain names at issue for approximately six years and thereby acquiesced and

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forfeited any right to complain about the conduct that forms the basis for its allegations. As with

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the Third Affirmative Defense above, this defense is related to Petronas’ delay in taking action

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on the alleged disputed domain names. This proposed amended defense sets forth ample facts to

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make this argument clear.

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Fifth Affirmative Defense: The Complaint is barred, in whole or in part, by failure to

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bring this action within the time allowed under the applicable the statute of limitation(s). See,

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e.g., Cal. Bus. & Prof. Code § 17208. Though Go Daddy believes the relevant statute of

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limitations was always clear – as the First Amended Complaint only alleges one cause of action

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that carries a statute of limitations – Go Daddy’s proposed amended affirmative defense lists the

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statute specifically. See Wyshak, 607 F.2d at 827 (holding that reference to the statute

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referencing the applicable statute of limitations in a motion was sufficient to support an

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affirmative defense that the plaintiff’s claims were barred by the statute of limitations) cited in

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Solis v. Zenith Capital, LLC, No. C-08-4854, 2009 U.S. Dist. LEXIS 43350, at *10 (N.D. Cal.

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May 8, 2009).

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Sixth Affirmative Defense: The Complaint is barred, in whole or in part, by the defense
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DEF’S. OPP. TO MOTION TO STRIKE AFF. DEFENSES
Case No: 09-CV-5939 PJH

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of misrepresentation of material facts. The Complaint contains numerous factually inaccurate

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allegations, including, inter alia, that “GoDaddy provides its ‘domain name forwarding’ service

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

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Complaint ¶ 30. In addition, on information and belief, Plaintiff has made false or improper

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representations with the intent to induce the U.S. Patent and Trademark Office to issue a

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trademark registration. The factual inaccuracies in Petronas’ First Amended Complaint are too

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numerous to mention individually, and many of the inaccuracies will be borne out in discovery in

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this matter. Two of the more prominent misrepresentations are listed specifically in Go Daddy’s

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proposed amended defense.

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Seventh Affirmative Defense: Plaintiff’s alleged trademark is invalid and therefore

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cannot support Plaintiff’s claims because, on information and belief, Plaintiff has abandoned the

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alleged mark, has never used it in the United States, or otherwise does not have valid United

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States trademark rights in the alleged mark. Plaintiff’s alleged trademark registration is invalid

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for the reasons set forth in the below counterclaim and therefore cannot support Plaintiff’s

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claims. Petronas has long known about Go Daddy’s position on trademark invalidity. In its U.S.

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Patent and Trademark Office Cancellation Action, Go Daddy has repeatedly expanded on the

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assertion that Petronas does not actually posses the U.S. trademark rights it asserts in the First

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Amended Complaint. This position was first articulated a year ago in Go Daddy’s Petition to

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Cancel Petronas’ U.S. trademark registration. See Declaration of John Slafsky in support of Go

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Daddy’s Motion for Leave to Amend, (Dkt #95), ¶ 3, Ex. B.

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Nonetheless, Go Daddy has added allegations to the proposed amended defense to insert

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these facts, and to incorporate the facts further explained and alleged in Go Daddy’s proposed

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Counterclaim for cancellation of Petronas’ U.S. trademark registration.

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Eighth Affirmative Defense: Plaintiff lacks standing to bring these claims because it

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does not possess valid United States trademark rights in the alleged trademark. Petronas does

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not articulate why it believed that the affirmative defense of lack of standing was insufficient,

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and does not present any authority stating that any further allegations to support such a defense

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are required. In any event, Go Daddy has provided additional information in its proposed
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DEF’S. OPP. TO MOTION TO STRIKE AFF. DEFENSES
Case No: 09-CV-5939 PJH

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Amended Answer – that Petronas lacks standing because it does not own the requisite U.S.

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trademark rights to support the two claims under the Anti-cybersquatting Consumer Protection

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Act (and therefore the dependant state law unfair competition claim).

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Go Daddy further explains the defense of trademark invalidity in its Seventh Affirmative
Defense, above.
Ninth Affirmative Defense: The Complaint is barred, in whole or in part, by the failure

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of Plaintiff to mitigate damages, if any, by waiting approximately six years to take action with

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regard to the domains at issue and choosing not to seek transfer of the domains at issue by the

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fastest available means, including a Uniform Domain-Name Dispute-Resolution Policy

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proceeding before an arbitrator accredited by the Internet Corporation for Assigned Names and

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Numbers, which proceeding would typically have been resolved far faster than the proceedings

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Plaintiff chose to pursue. Though Go Daddy has presented this position multiple times in

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various motions and other proceedings in this and related actions, Go Daddy has included ample

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facts in the proposed amended affirmative defense to provide fair notice to Petronas of the basis

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for the defense.

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Tenth Affirmative Defense: The Complaint is barred, in whole or in part, by the failure

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of Plaintiff to join an indispensable party as defendant in this action, including the domain name

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registrant, the company responsible for hosting the alleged website content, and anyone else that

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may be involved in the operation of the alleged websites. Again, Go Daddy has presented this

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position multiple times in various motions and other proceedings in this and related actions.

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Regardless, Go Daddy has included ample facts in the proposed amended affirmative defense to

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provide fair notice to Petronas of the basis for the defense.

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Eleventh Affirmative Defense: The Complaint is barred, in whole or in part, by the

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equitable doctrine of unclean hands. On information and belief, Plaintiff has made false or

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improper representations with the intent to induce the U.S. Patent and Trademark Office to issue

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a trademark registration. On information and belief, Plaintiff has wielded this registration

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against Go Daddy in this action while knowing that it is invalid, in whole or in part. As set forth

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below, the alleged trademark registration is therefore subject to cancellation or partial
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DEF’S. OPP. TO MOTION TO STRIKE AFF. DEFENSES
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cancellation. In this proposed amended final affirmative defense, Go Daddy includes facts

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already known and presented to Petronas, but in any event made clear within the body of the

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affirmative defense itself, and within the proposed counterclaim incorporated by reference and

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contained in the same document.

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In sum, particularly as amended, these affirmative defenses are well supported and

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provide more than adequate “fair notice” of Go Daddy’s defenses to Petronas. Go Daddy notes

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that Petronas has had two chances to articulate its allegations in the Complaint and First

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Amended Complaint, and that its current allegations stand even though the Court has expressed

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“certain reservations concerning the adequacy of the pleading . . . .” See Court Order of May 5,

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2011, at 1 (Dkt # 87). It is manifestly inequitable for Petronas to demand more exacting

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pleading standards for Defendant Go Daddy than it, as Plaintiff, adheres to in its complaints. In

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any event, should the Court find that any of the affirmative defenses require additional factual

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bases to be stated within the Answer, Go Daddy respectfully requests an opportunity to add such

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facts to a second proposed Amended Answer and Counterclaim.

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IV.

CONCLUSION

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For the foregoing reasons, Go Daddy respectfully requests that the Court deny Petronas’

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Motion to Strike Affirmative Defenses in its entirety as invalid on its face, or, in the alternative,

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as moot given Go Daddy’s Motion for Leave to Amend its Answer. To the extent the Court

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would like to hold a hearing on these matters, Go Daddy further respectfully requests that the

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Court move the hearing date for one or both motions, so that they can be heard on the same day.

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Also to the extent the Court finds that any of the affirmative defenses require additional factual

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bases to be stated within the Answer, Go Daddy respectfully requests an opportunity to add such

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facts to a second proposed Amended Answer and Counterclaim.

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Dated: July 12, 2011

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WILSON SONSINI GOODRICH & ROSATI
Professional Corporation
By: /s/ John L. Slafsky
John L. Slafsky
Attorneys for Defendant
GoDaddy.com, Inc.
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DEF’S. OPP. TO MOTION TO STRIKE AFF. DEFENSES
Case No: 09-CV-5939 PJH