The US Court of Appeals for the Ninth Circuit has ruled that third-party domain registrars such as GoDaddy are not liable for contributory trademark infringement by cybersquatters.

In its decision in Petronas v. GoDaddy.com, the Ninth Circuit agreed with a federal district court that the Malaysian oil and gas company Petroliam Nasional Berhard, which owns the trademark “PETRONAS,” could not maintain a claim for contributory infringement against GoDaddy, which was the registry for third party domains incorporating the mark.

A third party had registered the domains “petronastower.net” and “petronastowers.net” with GoDaddy in 2007.  Using GoDaddy’s domain-forward service, that third party led people who clicked on these domain names to an adult website.
When Petroliam Nasional Berhard complained to GoDaddy, the registrar declined to take action against the third party.

ICANN

GoDaddy contended 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 then sued GoDaddy in federal court in Northern California, alleging that the forwarding of the PETRONAS domains to the adult site was an act of contributory trademark infringement.

The district court ruled in favor of GoDaddy and dismissed the case.

ninth circuit

Petroliam Nasional Berhard then appealed to the Ninth Circuit, which agreed with the district court.  The court of appeals referred to the 1999 Anticybersquatting Consumer Protection Act (ACPA), which created a mechanism for trademark owners to contest infringing domain names.

The ACPA allows trademark owners to seek damages from, and injunctions against, anyone who “has a bad faith intent to profit from” someone else’s trademark and “registers, traffics in, or uses a [protected] domain name.”

The ACPA also allows trademark owners to take over infringing domain names from cybersquatters.

Petroliam Nasional Berhard had asked the Ninth Circuit to allow a claim under the ACPA against a registrar if its conduct contributed to the cybersquatters’ trademark infringement, but the court declined, citing the need to “spare neutral third party services providers from divining the intent of their customers” who registered or redirected domain names.

GoDaddy is the world’s largest domain name registrar, with 50 million registered domain names.  The court noted that it would be nearly impossible for GoDaddy to determine which domain name registrations had been made in bad faith.

How Can I Help?

If you have questions about domain names, cybersquatting, or trademark law, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

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