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No Contributory Cybersquatting Cause of Action Under the ACPA: Ninth Circuit
Practical Law Legal Update 4-551-3328 (Approx. 3 pages)
No Contributory Cybersquatting Cause of Action Under the ACPA: Ninth Circuit
by Practical Intellectual Property & Technology
| Published on 10 Dec 2013 • USA (National/Federal) |
In Petroliam Nasional Berhad (Petronas) v. GoDaddy.com, Inc., the US Court of Appeals for the Ninth Circuit held that the Anticybersquatting Consumer Protection Act does not provide a cause of action for contributory cybersquatting.
On December 4, 2013, in Petroliam Nasional Berhad (Petronas) v. GoDaddy.com, Inc., the US Court of Appeals for the Ninth Circuit affirmed the US District Court for the District of Northern California's grant of summary judgment in favor of GoDaddy.com on Petronas's claim that GoDaddy engaged in contributory cybersquatting. Notably, the court held that the Anticybersquatting Consumer Protection Act of 1999 (ACPA) does not provide a cause of action for contributory cybersquatting (No. 12-15584, (9th Cir. Dec. 4, 2013)).
Petronas, a Malaysian oil and gas company, owns the trademark PETRONAS. It alleged that the domain name registrar GoDaddy engaged in contributory cybersquatting when a registrant used GoDaddy's domain name forwarding service to direct domain names incorporating the mark to an adult website hosted on a web server maintained by a third party. In late 2009, Petronas contacted GoDaddy and requested that it take action against the website with the disputed domain names. GoDaddy investigated the issue but took no action because:
- It did not host the site.
- It was prevented by the Uniform Dispute Resolution Policy from participating in trademark disputes regarding domain name ownership.
Petronas sued GoDaddy for contributory cybersquatting, among other claims. After limited discovery, the district court dismissed the case and granted summary judgment to GoDaddy. Petronas appealed only the contributory cybersquatting claim.
The Ninth Circuit held that the ACPA does not include a contributory cybersquatting cause of action because:
- The plain text of the ACPA does not apply to the conduct that would be actionable under a contributory liability theory.
- Congress did not intend to implicitly include common law doctrines applicable to trademark infringement because the ACPA created a new cause of action distinct from traditional trademark remedies.
- Allowing suits against registrars for contributory cybersquatting would not advance the ACPA's goals. It would instead expand the ACPA's scope and undermine its limiting provisions requiring bad faith and narrowly defining who "uses" a domain name.
In concluding that the plain text of the ACPA does not provide a contributory cybersquatting cause of action, the court rejected Petronas's argument that the liability limiting language in 15 U.S.C. § 1114(2)(D)(iii) indicates that Congress intended to create a cause of action for secondary liability under 15 U.S.C. § 1125(d)(1)(A). Section 1114(2)(D)(iii) provides that a domain name registrar is not liable for damages under Section 1114 for the registration or maintenance of a domain name for another absent a showing of bad faith, intent to profit from the registration or maintenance of the domain name. Instead, the court noted that Section 1114 sets out remedies for the entire Lanham Act, including actions brought under Section 1125(a), which includes a cause of action for contributory infringement. Therefore, the Section 1114 limitations on secondary liability are equally consistent with the existence or absence of a cause of action for contributory cybersquatting under Section 1125(d).