30 September, 2015
In a case fit for a movie – which would surely win an Oscar – this suit filed in 2010, by Academy of Motion Picture Arts and Sciences (AMPAS) against GoDaddy Inc., under the Anti-cybersquatting Consumer Protection Act (ACPA), has finally yielded result. The suit was heavily sided in favour of AMPAS and was expected to win them 29.3 million USD in compensation, however it back flipped.
The main issue of AMPAS pertained to GoDaddy’s placement of advertisements on 293 web domains registered by GoDaddy customers that contained the marks “Academy Awards” or “Oscar” in the domain names.[i] AMPAS did not have an issue with registration of domain names containing AMPAS marks; rather their objection was regarding the commercial use of the domain names.
For a successful outcome in their favour, AMPAS had to prove the following; that their trademarks were distinctive at the time of registration, that accused domains were identical or confusingly similar to the trademarks belonging to AMPAS, that GoDaddy had registered, trafficked in or used the accused domains and that such act was done with the bad faith intent to profit from the marks. In furtherance of the court’s prior order in summary judgment as well as parties’ stipulations, the court had already held that GoDaddy had trafficked in or used the accused domains by enrolling those in their parked pages program. The court also held that AMPAS was the owner of AMPAS marks, and that the said marks were distinctive. The court further held that 237 of the 293 accused domains bore confusing similarity to these trademarks, and that GoDaddy did not register any of the accused domains.[ii] The only two issues remaining for consideration were; whether GoDaddy had possessed bad faith intent to profit from the AMPAS’s Marks, and that whether the remaining 56 domain names were also confusingly similar to AMPAS’s marks.
The Central District Court of California came to the finding that the AMPAS failed to prove that GoDaddy possessed bad faith intent to profit from the AMPAS Marks. Since AMPAS failed to prove that GoDaddy acted with bad faith intent to profit from AMPAS marks, the court decided not to go into the question of whether the remaining 56 accused domains were confusingly similar to AMPAS’s marks. Furthermore, the Court relatedly found that GoDaddy met its burden on its affirmative good faith safe harbor defense under ACPA as GoDaddy succeeded in showing that it had acted under good faith belief, that its use of the domains was a fair use or otherwise lawful, thereby serving as a complete defense to liability.
An important factor that contributed towards the judgement being granted in GoDaddy’s favor was that GoDaddy did not register any of the accused domains for itself. The court also took into account that GoDaddy required a domain name registrant to prove that her/his domain name did not violate third party rights and that s/he was unaware of any possible infringement or conflict with the rights of third party or a third party’s trade name or trademark. The registrant also had to certify that his/her website was in conformity with all local, state, federal and internal laws.[iii]
The Court found that the defendant had reasonably relied on the customers’ representation that any registrations made by them were not violative of third party’s trademarks. Furthermore, the court held that automated nature of the registration, routing and parked pages, showed that GoDaddy lacked the subjective intent imperative to profit from marks of AMPAS and that any instance of trademark infringement was not intentional. Moreover, GoDaddy received a mere sum of $107 in total revenue from advertisements on 72 accused domains, the remaining 221 generating no revenue.
The court also took into account the role played by the defendant in vigorously protecting third party rights. This was evident from GoDaddy’s quick response to any takedown request filed, immediately removing advertisements from the concerned domain. This trademark dispute resolution policy of GoDaddy also served as an evidence of lack of bad faith. Moreover, there was no evidence that GoDaddy tried to direct traffic to the accused domains.
Furthermore, GoDaddy did not have any control over third party advertisements that were displayed on the accused domains. This was under the exclusive control of the Google; further negating any subjective bad faith intent to profit off of AMPAS’s trademarks.
According to the court, the arguments put forward by AMPAS if allowed would have “imposed upon GoDaddy the unprecedented duty to act as the internet’s trademark police.”[iv] Since ACPA did not impose such obligations on the domain company, the latter could not be saddled with the responsibility of acting as trademark police.
[i]GoDaddy Victorious in $29M Trademark Dispute with Academy Awards
Available at :
https://www.wilmerhale.com/pages/publicationsandnewsdetail.aspx?NewsPubId=17179879433 (last accessed- September 24, 2015)
[ii]ACADEMY OF MOTION PICTURE ARTS AND SCIENCES vs GODADDY.COM, INC.Case No. CV 10-03738 AB (CWx) (Fed. R. Civ. P. 52(a)(1))
For further information, please contact:
Raashi Jain, LexOrbis