Privacy services like GoDaddy’s DomainsByProxy service earn money by enabling domain name registrants to obscure their identities. Any trademark owner whose mark has been used in an infringing domain name may confront substantial difficulty in ascertaining the infringer’s identity if the infringer has utilized such a privacy service. Indeed, creating such difficulty might reasonably be considered the privacy services’ primary purpose.
In Petroliam Nasional Berhad v. GoDaddy.com, Inc., the Ninth Circuit nevertheless refused to recognize a “contributory cybersquatting” liability theory under the Anticybersquatting Consumer Protection Act (“ACPA”). The court instead affirmed the trial court’s summary judgment in favor of GoDaddy, which had been sued by Malaysian oil and gas company Petronas for serving as registrar for petronastower.net and petronastowers.net and permitting the registrant to use GoDaddy’s forwarding service to direct those domain names to an adult website. The court acknowledged that secondary trademark infringement liability had long been recognized under the Lanham Act, but refused to recognize a similar secondary liability theory under ACPA. In so doing, the Ninth Circuit rejected contrary recent holdings of several district courts, including district courts in the Ninth Circuit.
Perhaps obviously, this decision is likely to foster even greater indifference, on the part of domain name registrars, as to whether their customers are infringing the trademark rights of others.