Go Daddy not liable for cybersquatting, US court rules
Oil company domain name 'lookalikes' redirected users to smut site
Go Daddy was not liable for a form of trademark infringement when a system that the domain name registrar operates was used to redirect visitors from allegedly 'cybersquatting' web domain names to a pornographic website, a US court has ruled.
Petronas, the national oil company of Malaysia, had argued that Go Daddy was in breach of US trademark law because it "used" the two domains to re-route visitors to the allegedly infringing sites to the pornography website through its servers in bad faith with the intent of profiting from its actions.
A district court in California dismissed Petronas' claims that Go Daddy was liable for cybersquatting. It also dismissed claims that Go Daddy was liable for contributory cybersquatting and instead granted Go Daddy the right to argue that Petronas' own trademark for the mark 'Petronas and Design' be invalidated.
Cybersquatting occurs when businesses buy website domain names with the purpose of selling them on to trademark owners for a profit.
In 2010 Petronas had obtained a court order requiring the websites www.petronastower.net and www.petronastowers.net to be transferred into its name. The two domains were registered with Go Daddy by Heiko Schoenekess, which used Go Daddy's automated website-forwarding system to redirect visitors to the domains to a website featuring pornography. Petronas itself operates several websites encompassing the word 'petronas' in the domain name, including www.petronastwintowers.com.my, according to the court ruling.
Under part of the US Lanham Act – the Anticybersquatting Consumer Protection Act (ACPA) – damages of up to $100,000 can be awarded against anyone who registered or "used" domains "identical to, confusingly similar or dilutive of" a trademark in bad faith and with intent to profit.
The court ruled that Go Daddy had not used the domains and was therefore not liable for cybersquatting under the terms of ACPA.
"The forwarding of the disputed domains does not amount to 'use' of the domain names," the district court in the northern district of California ruled.
"Domain name forwarding is a standard service that has been provided by Go Daddy and virtually all registrars for more than a decade. Go Daddy provides forwarding services for millions of domain names under its management, and has provided such service in combination with its other domain name routing services since 2002 or before. Go Daddy does not charge customers for domain forwarding, but rather offers this routing option as part of its registration services. Go Daddy’s registration customers, using Go Daddy’s dashboard, can configure the name server to forward a domain name to an existing website. This automated process is accomplished without any interaction between the registrant and Go Daddy personnel," the ruling said.
"The evidence shows that Go Daddy simply provided the infrastructure to the registrant to route the disputed domains to the website of his choosing. Only the domain name registrant or the registrant’s authorised licensee can 'use' a domain name for purposes of the ACPA," the court ruled.
The court said that there was no evidence that Go Daddy had entered into a licence agreement to authorise it to 'use' the cybersquatting domains.
"GoDaddy's contractual right to terminate service does not equate to a license to use the registrant’s domain names, and the fact that the registrant forwards the domain name through Go Daddy’s systems does not create a reciprocal license for Go Daddy to use the registrant’s domain names," the court said.
Next page: Go Daddy did not redirect in 'bad faith'
Part of this makes no sense whatsoever and smells very bad.
The judge said that Petronas could lose their trademark over this?
WTF? Has that judge completely lost their mind?
The ruling that Petronas can't hold GoDaddy liable makes sense, as they only provide a service and aren't (yet) legally responsible for policing it, but suggesting that means GoDaddy can countersue and deprive Petronas of their trademark stinks to high heaven.
The correct ruling would be to say that GoDaddy are not liable, award costs accordingly and reject the case.
According to the rest of the ruling, GoDaddy have no stake in this *whatsoever*, so they shouldn't suffer the legal costs of defence *or be permitted to go after Petronas either*.
The judge hasn't lost his mind, he is just point out what the law says.
When you register a trademark, and those rights are granted (it isn't automatic) you don't get all-exclusive rights to use mark for anything you want. Your rights are limited to the area of trade to which you were granted the rights.
So The Register can have rights on "Register" for publishing, someone else can have rights to "Register" for point of sale systems, someone else can have rights to "Register" for a heating system, and someone could even make a car and call it the "Register". All are different areas of trade, and none of the trademarks are in conflict with each other, as long as they stay within their areas of trade. ALL of them have rights to register and use a domain name containing their common mark.
So Apple Computer can have a mark on Apple, and Apple Records can have a mark on Apple, and there is no problem. When both entered the music publishing business, however, there became a problem - and Steve Jobs lost because he didn't have rights to use "apple" to distribute music.
When a trademark holder uses the trademark beyond their granted area of trade, they are diluting their mark. If they dilute their mark, they can have their mark invalidated. A smart trademark owner amends his filing before entering an additional area of trade so that doesn't happen.
Petronas aparently doesn't have any rights to the name when it comes to pornography. In claiming rights, the judge found that Petronas was doing so falsely, and in doing so was diluting their mark.
This wasn't so much about saying that GoDaddy could go after Petronas, as much as it was a a slap against Petronas and their legal counsil for even filing the suite. Basicly telling Petronas that they don't have a leg to stand on, and that if they keep wasting everyones time that they may loose a lot more than some minorl legal fees.
> What gave you that idea?
Its a logical extension and implication of what you said. You're criticising the company because they haven't got websites against all these stupid names, and making the rather comical assertion that a company with turnover in excess of 200 billion dollars is indulging in this court case for the sake of damages up to 100,000 dollars maximum.
In a logical and rational DNS system, as opposed to one which is designed for the registrars to gouge as much money as possible, an organisation would only need to use and register a single domain in each country, and cybersquat, typoalikes and all the other means that lowlives use to gain trafic from other folks names...