United States District Court, N.D. California
[Copyrighted Material Omitted]
Jia Jia Gu, Perry Clark, Kirkland & Ellis LLP, Palo Alto, CA, Sarah Louise Forney, Kirkland & Ellis LLP, San Francisco, CA, for Plaintiff.
John Lawrence Slafsky, David L. Lansky, Hollis Beth Hire, Wilson Sonsini Goodrich & Rosati, Palo Alto, CA, for Defendant.
Ian Ballon, Lori Chang, Greenberg Traurig LLP, Santa Monica, CA, for eNom, Inc.
ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT IN PART AND DENYING IT IN PART; ORDER DENYING PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT
PHYLLIS J. HAMILTON, District Judge.
Defendant's motion for summary judgment and plaintiff's motion for partial summary judgment came on for hearing before this court on December 7, 2011. Plaintiff appeared by its counsel Perry R. Clark, and defendant appeared by its counsel John L. Slafsky. Having read the parties' papers, including the supplemental briefs and the briefs of amici curiae, and having carefully considered the arguments of counsel and the relevant legal authority, the court hereby GRANTS defendant's motion in part and DENIES it in part, and DENIES plaintiff's motion.
This is a case brought under the Lanham Act, alleging cybersquatting and contributory cybersquatting, and also alleging state law claims of unfair competition. Plaintiff Petroliam Nasional Berhad (" Petronas" ) is the national oil company of Malaysia, and is wholly-owned by the Government of Malaysia. Defendant GoDaddy.com, Inc. (" GoDaddy.com" or " Go Daddy" ) is a domain name registrar, with over 50 million domain names registered by customers around the world.
Petronas asserts that two domain names— www. petronas tower. net and www. petronas towers. net (the " Disputed Domains" )— which were registered by Go Daddy, were used by one or more non-parties to violate its trademark rights by cybersquatting. Petronas seeks to hold Go Daddy liable for cybersquatting and for contributory cybersquatting, on the basis that the non-party registrant used Go Daddy's automated systems to point the domain names to a pornographic website that was hosted elsewhere. Go Daddy seeks to have the Petronas Mark declared invalid.
THE DOMAIN NAME SYSTEM
The Internet is a network of interconnected computers and computer networks. See, e.g., Reno v. ACLU, 521 U.S. 844, 849-53, 117 S.Ct. 2329, 138 L.Ed.2d 874 (1997); Konop v. Hawaiian Airlines, Inc., 302 F.3d 868, 874-75 (9th Cir.2002). Every computer connected to the Internet has a numerical address known as an " Internet Protocol Address" or " IP Address," required for one computer to communicate with another. Few people access websites by typing the IP Address. Instead, an Internet user types an alpha-numeric " domain name" that represents the IP Address into his/her web browser.
In response to the entry of a domain name, the user's computer communicates back and forth with the Domain Name System (" DNS" ), a set of servers that allow the user to locate the IP Address for the computer that hosts the desired website. The DNS does not provide any website content, but instead functions as the Internet's equivalent of " directory assistance." The fundamental building block of the DNS is the " nameserver," which is a database of IP Addresses.
The orderly process for acquiring domain names enables the DNS to function properly. The rights to domain names are sold to the public in a process known as " domain name registration." Domain name " registries," the entities responsible for maintaining the authoritative, master list of all domain names, do not deal directly with the general public. Rather, a person who registers a domain name does so through a domain name " registrar" such as Go Daddy.
The registrar is the designated intermediary between the domain name registrant and the domain name registry. Go Daddy and all other registrars are accredited by the Internet Corporation for Assigned Names and Numbers (" ICANN" ), the international non-profit corporation that has been designated by the United States government to manage and coordinate domain names and IP Addresses.
A registrant chooses a registrar to provide the registration services. That registrar becomes the designated registrar for the selected domain name. Only the designated registrar may modify or delete information about domain names in a central registry database. After registering the domain name, the registrant uses an online dashboard provided by the registrar to designate the nameserver information concerning where the website is hosted. The registrar's participation in this process is entirely automated.
DOMAIN NAME RESOLUTION AND ROUTING
" Domain name resolution" is the process whereby the DNS converts a domain name into an IP Address that points to a computer hosting a website. Resolution is a multi-step process involving a series of lookups (" resolutions" ) on various servers. In order for the user's browser to determine which computer on the Internet to access, the browser performs a domain
name lookup and translates that domain name into a unique IP Address.
This resolution request is initially sent to the DNS resolver that is part of the user's local operating system. Following a series of queries to the local nameserver of the user's Internet Service Provider (" ISP" ), and to the DNS databases, the authoritative domain nameserver eventually returns the IP Address of the computer hosting the sought Internet content. The ISP local nameserver then returns this information to the user's DNS resolver, which makes it possible for the user's computer to access the Internet content.
This resolution process, by which the user obtains the IP address of the computer hosting the desired Internet content from the authoritative domain nameserver, is commonly referred to as " routing." Registrars like Go Daddy play a critical role in the process by giving the registrant an efficient means to configure the nameserver to point the user to the desired Internet content. If registrars stopped performing the function of taking name server information and providing it to registries, the Internet would not function.
Using the registrar's " dashboard," the registrant can choose from several options to point his domain name to content. The registrant can do nothing, in which case the nameserver might route to a " coming soon" page or to a page with other default information. In the alternative, the registrant can configure the nameserver so that it routes either to a " record not found" error message, or to a newly created website on a server hosted by the registrar or some third party, or to an existing website already associated with another domain name.
This last form of routing is referred to as " domain name forwarding." When a registrant elects to route his domain name in this fashion, an Internet user typing the forwarded domain name into his web browser will be automatically directed to the pre-existing website. From the Internet user's perspective, there is no difference between forwarding and other forms of routing.
Petronas is based in Kuala Lumpur, Malaysia. Its official website is www. petronas. com. my, and it owns several additional U.S.-based websites that incorporate the name " Petronas." Petronas uses the www. petronas twin towers. com. my domain name for the official website of the Petronas Twin Towers (the headquarters of Petronas).
In May 2003, a third party registered two domain names, www. petronastower. net and www. petronastowers. net (the " Disputed Domains" ), with the domain registrar eNom.com (" eNom" ), and also pointed— or " forwarded" — the Disputed Domains to a preexisting website featuring pornography. For most of the time between May 29, 2003 and November 11, 2006, at least one of the Disputed Domains was directed to a website displaying pornography. On April 1, 2007, the then-registrant— Heiko Schoenekess— changed registrars from eNom to Go Daddy. Schoenekess used Go Daddy's online " dashboard" to automatically forward the Internet traffic for the Disputed Domains to the same pornographic website with which they had previously been associated.
It was not until November 26, 2009 that Petronas learned that the domain name petronastower.net had been registered with GoDaddy.com, by a third party. Petronas asserts that it immediately advised Go Daddy of the unauthorized use of the " petronastower" name, and requested that Go Daddy cease its " direct and contributory infringement" of Petronas' mark.
Go Daddy responded on November 30, 2009, stating that it would not tolerate illegal content on its customers' websites, and would cooperate with law enforcement to get any such websites taken down. Go Daddy further informed Petronas that
any disputes over the ownership or wording of the domain name itself will need to be sent to either the registrant, through an arbitration forum such as World Intellectual Property Organization ... or the local court system. Per ICANN regulations, domain registrars are prohibited from becoming involved in domain ownership disputes.
Nevertheless, instead of utilizing an arbitration procedure, which it had successfully used previously, Petronas submitted a trademark claim to Go Daddy on December 16, 2009. Petronas attached a copy of Go Daddy's " Trademark and/or Copyright Infringement Policy" to the claim. That policy states, with regard to " Domain Name Dispute Claims:"
Please refer to the Uniform Domain Name Dispute Resolution Policy (" the UDRP" ) if you have a concern or dispute concerning a domain name. The UDRP covers domain name disputes; this policy specifically excludes domain name disputes.
Go Daddy responded the same day, informing Petronas that although the domain name petronastower.net was registered through Go Daddy, " the domain is forwarding to a website that is hosted elsewhere," and that " [a]ny issues regarding the content of the website will need to be ...