David Lilenfeld Blog The intellectual property blog of David Lilenfeld

15Jan/14264

GoDaddy Off The Hook for Contributory Trademark Infringement

By David Lilenfeld on January 15, 2014

Good news came recently in the intellectual property world for GoDaddy, as well as other domain name registrars.  In a recent trademark case, the United States Court of Appeals for the Ninth Circuit ruled that GoDaddy is not liable for contributory trademark infringement by cybersquatters.  If you aren’t familiar with cybersquatters, they are third parties who register domain names similar to well-known trademarks and redirect their websites to alternative, and often offensive, content.

The appellate case, Petronas v. GoDaddy.com, came after a federal district court’s dismissal on the same facts.  The facts, though relatively simple, serve as a large victory for domain name registrars since cybersquatting is becoming more common with so many recent technological. A third party registered the domain names <www.petronastower.net> and <petronastowers.net> using GoDaddy, thereby infringing or diluting the trademark PETRONAS, owned by the Malaysian oil and gas company Petroliam Nasional Berhard.  The third party’s domains, via GoDaddy’s domain-forward service, led users who visited the websites to adult content instead. GoDaddy declined to penalize the cybersquatter, asserting that under the Uniform Domain Name Dispute Resolution Policy promulgated by ICANN (the Internet Corporation for Assigned Names and Numbers), a domain registrar cannot get involved in trademark disputes involving domain names.

Petroliam Nasional Berhard brought suit, alleging contributory trademark infringement by GoDaddy for hosting the infringing websites and providing a forwarding service to adult content.  The district court declined to hold GoDaddy liable for refusing to take action.

On appeal, Petroliam Nasional Berhard requested that the Ninth Circuit allow a claim under the 1999 Anticybersquatting Consumer Protection Act (ACPA), a law that allows trademark owners to contest infringing domain names, against a domain name registrar if the registrar’s conduct contributed to the cybersquatter’s trademark infringement.  The Ninth Circuit ruled against Petroliam Nasional Berhard, referring to the need to “spare neutral third party services providers from divining the intent of their customers” who registered or redirected domain names.

While GoDaddy is the world’s largest domain name registrar, hosting approximately 50 million registered domain names in its database, the ruling extends to smaller domain name registrars as well.  Considering the vast number of domain names registered through GoDaddy, the Court pointed out that it would be nearly impossible for GoDaddy to track which domain names were legitimate and lawful and which were being used for cybersquatting.

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