Domain Registrars and Parking Companies Victorious in GoDaddy Cybersquatting Case
California courts have favored GoDaddy in a longstanding cybersquatting case filed by the Academy of Motion Picture Arts and Sciences (AMPAS), the entity behind the Academy Awards. The 128-page decision contains plenty of information that will likely be utilized in future cases of the same nature.
The case began in 2010 when AMPAS sued GoDaddy over an alleged violation of the Anticybersquatting Consumer Protection Act (ACPA). According to the Complaint, some GoDaddy customers were buying domains that contained AMPAS trademarks and easily parking them using GoDaddy’s parking programs.
On September 10, 2015, Judge Andre Birotte of the USDC Central District of California ruled in favor of GoDaddy, citing nine reasons why he believed GoDaddy did not intend to profit in bad faith from AMPAS marks.
GoDaddy simply “used” or “trafficked in” the accused domain names, using reasonable belief that the registrants had rights to the domain names and any marks contained within them.
In some cases, the accused domain names may have referred to the legal names of the registrants (i.e. Oscar Sagastume, Oscar Hernandez).
There was no evidence that the accused domain name strings were associated with any bona fide prior offering of goods or services.
The nature of display ads on the parked domains was controlled by Google algorithms, and the advertisements did nothing to suggest partnership or sponsorship of the AMPAS.
GoDaddy employees testified that there was no bad faith or intent to profit from the accused domain names.
GoDaddy never attempted to sell the accused domain names for financial gain.
GoDaddy did not provide misleading or false contact information on behalf of the registrants, nor did it register any of the accused domains.
GoDaddy did not partake in “warehousing,” as it did not register the domain names. Therefore, even if the registrants’ registration of multiple domain names was evidence of some bad faith, that bad faith can’t be attributed to GoDaddy.
GoDaddy could not possibly have had independent knowledge of whether or not the famous marks in the accused domains were authorized for use by the registrants, given its automated registration and parking process.
The following paragraph from the decision illuminates the overall reasoning behind the court’s decision:
“The ultimate inquiry for the Court under the ACPA is whether AMPAS has shown by a preponderance of evidence that GoDaddy had a subjective bad faith intent to profit from the AMPAS Marks. It is not sufficient under the ACPA for AMPAS to prove that GoDaddy had an intent to profit from its Parked Page Programs. Nor is it sufficient for AMPAS to prove that infringing domains were sometimes registered by GoDaddy’s customers and automatically enrolled by GoDaddy in the Parked Page Programs if no DNS was entered by the registrant for their domain name at the time of registration. Congress did not enact strict liability or a negligence standard in the ACPA. It required proof that a defendant registered, used, or trafficked in a domain name with the specific, subjective intent to profit in bad faith off a person’s trademark.”
Read the full decision here.
