A Federal Court has held that Godaddy.com was not liable to a trademark holder although the domain was being “forwarded” by Godaddy to the registrants hosting company.
The case is of Berhad v. GoDaddy, and the decision was handed down by the Northern District of California on Jan. 3, 2012.
We will let the court describe the facts of the case and its findings.
Having read through the 20 page opinion I would say the court came to the right conclusion and the Plaintiff simply went well in the wrong direction suing the domain name registrar rather than registrant in federal court. We also have to applaud Godaddy for defending this case, which you can tell from the opinion was not cheap, rather than caving in to the demand of the Plaintiff.
Here is the court statement of the Facts:
“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 Behad (“Petronas”) is the national oil company of Malaysia, and is wholly-owned by the Government of Malaysia. (Its official website is http://www.petronas.com.my).”
“Petronas asserts that two domain names, http://www.petronastower.net and http://www.petronastowers.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.”
“The court noted that a registrant of a domain name 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.”
“In May 2003, a third party registered two domain names, http://www.petronastower.net and http://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.”