Citation Edit

Petroliam Nasional Berhad v., Inc., 2012 WL 10532 (N.D. Cal. Jan. 3, 2012) (full-text).

Factual Background Edit

Plaintiff maintains websites at and, as well as various other sites that incorporate the “Petronas” mark. Plaintiff alleged that two domain names — and — were used to violate its trademark rights by cybersquatting and forwarding traffic to pornography sites.

The parties first encountered one another in 2009 when Plaintiff learned of the allegedly infringing domains. Plaintiff immediately sent notice to GoDaddy and demanded that GoDaddy cease its "direct and contributory infringement" of the Petronas mark. GoDaddy responded by stating that it would not tolerate illegal content on its customerswebsites and that it would cooperate with law enforcement to get any such websites taken down. GoDaddy further informed Petronas that any disputes over ownership or wording of the domain name itself would need to be settled through an arbitration forum such as WIPO or the local court system, per ICANN regulations. As an ICANN-accredited registrar, GoDaddy is required to implement and follow the Uniform Dispute Resolution Policy (UDRP) for disputes concerning domain names. That policy requires registrars, other than in exceptional circumstances, to maintain the status quo during a domain name dispute until receipt of directions from the registrant, and order from a court or arbitral tribunal, or the decision of an administrative panel.

Trial Court Proceedings Edit

Plaintiff brought this action against Go Daddy for cybersquatting and contributory cybersquatting on the basis that the non-party registrant used GoDaddy’s automated systems to point the domain names at issue to pornography. Finding that GoDaddy’s routing server did not "use" the subject domains, the court granted GoDaddy’s motion for summary judgment as to Plaintiff’s claims for direct and contributory infringement.

Subsequent to filing this action, Plaintiff filed in rem actions against and, and the court granted Plaintiff’s motions to transfer ownership of the domain names.

Direct cybersquatting Edit

"Cybersquatting" is the bad faith registration of a domain name that is identical or confusingly similar to another's distinctive mark. 15 U.S.C. § 1125(d)(1)(A). The Anticybersquatting Consumer Protection Act (ACPA) establishes civil liability for "cyberpiracy" where a plaintiff proves that (1) the defendant registered, trafficked in, or used a domain name; (2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and (3) the defendant acted "with bad faith intent to profit from that mark." GoDaddy argued that there was insufficient evidence for a jury to find for Plaintiff on elements 1 or 3, largely due to the argument that the automatic routing was not a "use" and that GoDaddy was a passive participant in the events at issue with none of the requisite intent.

In support of its motion for summary judgment, GoDaddy argued that its conduct is not the type of "use" that is covered by the ACPA, as GoDaddy neither created the websites to which the disputed domains pertain, nor placed any content on such website, nor ever had any association with such website. GoDaddy’s involvement was strictly limited to providing the infrastructure for the registrant to route the disputed domains automatically to a website of his own choosing. BecauseGo Daddy merely provided an automated service, there was no intent of any kind of its part, and certainly no intent to infringe the Patronas mark.

GoDaddy further argued that there was no bad faith in refusing to remove the dispute domains or disable the routing as it was acting in accordance with its standard operating procedures as well as the UDRP. As stated in the ACPA, "[t]he bad faith required to support a cybersquatting claim is not general bad faith, but a ‘bad faith intent to profit from the mark.'"[1]

Ultimately, the court affirmed that only the domain registrant or the registrant’s authorized licensee can "use" a domain for purposes of the ACPA. Absent a showing that there was some type of "license" granted by the registrant to GoDaddy, GoDaddy's conduct in providing a system that allows an automatic forwarding of domains is not the type of use contemplated by the ACPA.

Contributory cybersquatting Edit

The parties initially disagreed as to whether "contributory cybersquatting" is a valid claim. The court held that because the ACPA was enacted against the settled common law theories of contributory liability in the trademark context, a judicially-created claim of contributory cybersquatting would be valid. In the Ninth Circuit, a party is liable for contributory trademark infringement when he has knowledge of another’s infringement, and either materially contributes to or induces that infringement.[2]

In addition, the existence of direct infringement is a necessary element of a claim for contributory infringement.[3] Because there was no evidence of any contribution or inducement of infringement on the part of GoDaddy, and because GoDaddy’s only involvement was a passive forwarding service, the court granted GoDaddy’s motion for summary judgment on the issue of contributory cybersquatting as well.

References Edit

  1. Solid Host, NL v. Namecheap, Inc., 652 F.Supp.2d 1092, 1109 (C.D. Cal. 2009).
  2. Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 795 (9th Cir. 2007).
  3. Id. at 795.

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