In Petroliam Nasional Berhad v. GoDaddy.Com, 737 F.3d 546 (9th Cir. 2013) (No. 12-15584), a third party registered several domain names that included the trademarked name of plaintiff Petronas, a large oil and gas company. The third party used GoDaddy’s domain-forwarding service to direct the disputed domain names to an adult web site. Petronas sued GoDaddy, alleging contributory cybersquatting under the federal Anti-Cybersquatting Consumer Protection Act (ACPA). The district court granted summary judgment in favor of GoDaddy. The Ninth Circuit affirmed, holding as a matter of first impression that the ACPA does not include a cause of action for contributory cybersquatting. The court ruled that the plain language of the Act limited liability to those who register or use a domain name with a bad faith intent to profit from a protected mark; it makes no express provision for secondary liability. The court rejected Petronas’ argument that Congress intended to implicitly include within the ACPA common-law doctrines applicable to trademark infringement, such as contributory infringement, concluding instead that the ACPA created a new cause of action distinct from traditional trademark remedies. The court further held that extending liability to registrars who may have aided the cybersquatting but are not themselves cybersquatters would impose on such parties the “nearly impossible task” of having to analyze their customers’ subjective intent with respect to each domain name they service.
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