Background
The Internet domain registrar GoDaddy prevailed against the Academy of Motion Picture Arts and Sciences (the Academy) in a lawsuit in which the Academy had accused the Scottsdale, Arizona-based company of cyber squatting.
The Lawsuit
Originally filed in 2010, the Academy’s suit alleged that GoDaddy was allowing its customers to park their pages and share in the revenue collected from the advertisements displayed on those pages. The Academy further alleged that the domain registrar had allowed its customers to purchase a total of 293 domain names including academyawards.net, oscarsredcarpet.com, and billycrystal2012oscars.com, thereby making unauthorised profits from the Academy’s trademarks.
Progress of the Case
The lawsuit, which stretched for almost five years, had a somewhat dramatic course. At an early stage, the Academy had prevailed on the question of confusing or deceptive similarity, establishing that more than 80 per cent of the domain names in dispute were confusingly or deceptively similar to its trademarks. GoDaddy’s principal defence was one of good faith. It submitted that websites such as academyawardbuzz.com did not generate substantial sums, the revenue from any individual site amounting to no more than a few hundred dollars, and that no substantial quantitative loss to the Academy had been demonstrated.
The District Court Decision
The District Court found in favour of GoDaddy. On the question of bad faith intent — the central requirement under the Anti-Cybersquatting Consumer Protection Act — the Court held:
“the Academy had ‘failed to produce any evidence that GoDaddy possessed subjective bad faith intent to profit off of the AMPAS Marks’.”
The Court further found that, before enrolling any domain in its Parked Pages Programme, GoDaddy required each registrant to certify the right to use the domain without infringing any third-party marks or violating any state or federal law, and that GoDaddy had reason to rely on such representations. The Court also accepted that any trademark infringement arising from GoDaddy’s use of confusingly similar domain names through its automated processes was not intentional, and recognised that GoDaddy played an active role in protecting third-party marks through its trademark policy, under which any trademark holder could report an incident of cyber squatting and GoDaddy would remove all advertisements from the relevant domain.
On the broader theory of liability, the Court stated that the Academy’s claims, if accepted, would have:
“imposed upon GoDaddy the unprecedented duty to act as the internet’s trademark police. The ACPA did not impose such sweeping obligations.”
Significance
The decision is significant for its application of the Anti-Cybersquatting Consumer Protection Act to a domain registrar operating a parked pages programme. The Academy had sought damages of $30 million. The District Court’s ruling confirms that a registrar’s liability under the Act is dependent on proof of subjective bad faith intent to profit, and that reliance on registrant certifications may constitute a sound basis for a good faith defence.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.