The 9th Circuit Court of Appeals has just ruled that there is No Such Thing As Contributory Cybersquatting Under the Anticybersquatting Consumer Protection Act (ACPA).
The case is PETROLIAM NASIONAL, Plaintiff-counter-claim-defendant, Appellant, v.GODADDY.COM, INC.Defendant-counter-claimant, Appellee., No. 12-15584 D.C. No. 4:09-cv-05939- PJH
The case is an appeal from the United States District Court for the Northern District of California.
Petroliam Nasional Berhad, a Malaysian oil and gas company that owned the trademark to the name “PETRONAS,” alleged that Godaddy.com, Inc., a domain name registrar, engaged in contributory cybersquatting when a registrant used GoDaddy’s domain name forwarding service to direct the domain names “petronastower.net” and petronastowers.net” to an adult web site hosted on a web server maintained by a third party.
The panel held that neither the plain text nor the purpose of the ACPA provided support for a cause of action for contributory cybersquatting. It held that the ACPA created a new and distinct cause of action, and Congress did not incorporate the common law of trademark, including contributory infringement, into the ACPA. The panel therefore affirmed the judgment of the district court.
In this appeal, Petroliam NasionalBerhad (Petronas) requests that we read a cause of action for contributory cybersquatting into the Anticybersquatting Consumer Protection Act (ACPA or Act), 15 U.S.C. § 1125(d). Because we conclude that neither the plain text nor the purpose of the ACPA provide support for such a cause of action, we hold that there is none. We therefore affirm the judgment of the district court.
FACTS AND PRIOR PROCEEDINGS
Petrolium Nasional Berhad (Petronas) is a major oil and gas company with its headquarters in Kuala Lumpur.
Petronas owns the trademark to the name “PETRONAS.”
Godaddy.com, Inc. (GoDaddy) is the world’s largest domain name registrar, maintaining over 50 million domain names registered by customers around the world. GoDaddy also provides domain name forwarding services, which, like its registration service, enables Internet users who type in a particular domain name to arrive at the target site specified by GoDaddy’s customer, the registrant.
In 2003, a third party registered the domain names “petronastower.net” and “petronastowers.net” through a registrar other than GoDaddy.
In 2007, the owner of those names transferred its registration service to GoDaddy.
The registrant used GoDaddy’s domain name forwarding service to direct the disputed domain names to the adult web site, “camfunchat.com,” which was hosted on a web server maintained by a third party, and which had been associated with the disputed domain names, using the previous registrar.…
