Petroliam Nasional Berhad v. godaddy.com, Inc.
737 F.3d 546
9th Cir.2013Background
- Petronas (Malaysian oil company) owned the PETRONAS trademark; third party registered “petronastower.net” and “petronastowers.net” and later moved the registrations to GoDaddy, which provided domain forwarding to an adult site.
- Petronas asked GoDaddy to take action; GoDaddy declined, citing that it did not host the content and was constrained by the UDRP from intervening in registration disputes.
- Petronas sued GoDaddy in N.D. Cal. alleging, among other claims, contributory cybersquatting under the ACPA; the district court granted summary judgment for GoDaddy on the contributory cybersquatting claim.
- Petronas appealed only the contributory cybersquatting claim, arguing the ACPA incorporates common-law secondary liability (contributory liability) into its scheme.
- The Ninth Circuit considered statutory text, legislative purpose, and practical effects of imposing secondary liability on registrars before affirming dismissal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the ACPA recognizes a cause of action for contributory cybersquatting | ACPA sits inside the Lanham Act and was enacted against a backdrop of common-law contributory trademark liability, so Congress intended secondary liability to apply | ACPA’s text imposes liability only on those who "register, traffic in, or use" a domain name with bad-faith intent; Congress knew how to impose secondary liability but did not do so | No — the ACPA does not provide a cause of action for contributory cybersquatting |
| Whether statutory text supports extending liability to registrars or other third parties who facilitate domain names | Section 1114 limiting registrar liability shows Congress contemplated registrar exposure and thus intended secondary liability under ACPA | Section 1114(2)(D)(iii) applies to Section 1114 remedies generally and does not imply contributory liability exists under §1125(d) | No — plain text confines liability to primary actors and does not create secondary liability |
| Whether common-law trademark principles should be inferred into the ACPA | Because Lanham Act incorporated common law, and ACPA is within Lanham Act, common-law contributory liability should be read into ACPA | ACPA created a new, distinct statutory cause of action tailored to cybersquatting (with different elements and a statutory bad-faith test), so common-law inferences are inappropriate | No — ACPA is a new statutory regime and does not import contributory doctrines |
| Whether imposing contributory liability would further ACPA’s goals | Contributory liability would help prevent abusive registrations by holding facilitators accountable | Imposing secondary liability would force registrars to adjudicate customers’ subjective bad faith, chill legitimate uses, cause false positives, and conflict with ACPA’s narrow, practical scheme | No — imposing contributory liability would undermine ACPA’s targeted design and practical operation |
Key Cases Cited
- Inwood Laboratories, Inc. v. Ives Laboratories, 456 U.S. 844 (contributory trademark liability recognized under Lanham Act background)
- Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164 (no general presumption of aider-and-abettor liability absent statutory text)
- BedRoc Ltd., LLC v. United States, 541 U.S. 176 (statutory interpretation presumes Congress means what it says)
- Moseley v. V Secret Catalogue, 537 U.S. 418 (Lanham Act codified traditional unfair competition/trademark law)
- Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (registrar secondary-liability discussion informing legislative history)