Petronas v. GoDaddy.com

The Anticybersquatting Consumer Protection Act does not incorporate the common law of trademark and therefore does not provide a cause of action for contributory cybersquatting.

Petroliam Nasional Berhad ("Petronas"), an oil company headquartered in Kuala Lumpur, Malaysia, owned the trademark to the name "Petronas." GoDaddy.com, Inc. ("GoDaddy") is a domain name registrar and domain name forwarding service that enables "internet users who type in a particular domain name to arrive at the target site specified by GoDaddy’s customer." The domain names "petronastower.net" and "petronastowers.net" were originally registered through a third party, then transferred to GoDaddy. The third party then used GoDaddy's forwarding service to use the domain names to forward to an adult web site. A Petronas subsidiary discovered the domain names and requested that GoDaddy take action against the domain name for possible trademark infringement. After GoDaddy refused, Petronas filed suit alleging a number of theories, specifically contributory cybersquatting pursuant to 15 U.S.C. § 1125(d). The district court granted summary judgment in favor of GoDaddy; Petronas appealed. The Ninth Circuit held that the Anticybersquatting Consumer Protection Act (“ACPA”) “does not include a cause of action for contributory cybersquatting because: (1) the text of the Act does not apply to the conduct that would be actionable under such a theory; (2) Congress did not intend to implicitly include common law doctrines applicable to trademark infringement because the ACPA created a new cause of action that is distinct from traditional trademark remedies; and (3) allowing suits against registrars for contributory cybersquatting would not advance the goals of the statute." Thus, the panel affirmed the district court’s judgment and held that the ACPA does not provide a cause of action for contributory cybersquatting. AFFIRMED.