Trademark Services

Recently the Internet domain registrar, GoDaddy had its Oscar-worthy moment, winning against the Academy of Motion Picture Arts and Sciences (‘Academy’ for brevity). The Academy had accused the Scottsdale, Arizona based company of cyber squatting.

Originally filed in 2010, the lawsuit was filed by the Academy, stating that GoDaddy was allowing its customers “to “park” their pages and  share in the revenue” collected from the advertisements on the said pages. Further the Academy stated that the internet domain registrar had allowed its customers to purchase a total of 293 domain names like academyawards.net, oscarsredcarpet.com, billycrystal2012oscars.com etc, making unauthorized profits off the Academy’s trademarks.

The law suit that stretched for almost half a decade had a story quite like the movies. Earlier on in the case, the had Academy prevailed, showing that more than 80 percent of the domain names were confusingly or deceptively similar their trademarks. The odds seemed to be against GoDaddy. Being the underdog in this case, the only defense left with it was that of good faith. It stated that websites like “academyawardbuzz.com” did not generate large sums of money, besides a diminutive amount of a few hundred dollars. Thus, no substantial quantitative loss was demonstrated.

Favoring GoDaddy, the District Court stated that the Academy had “failed to produce any evidence that GoDaddy possessed subjective bad faith intent to profit off of the AMPAS Marks”. Further the Court said that “before enrolling any domain (including the 293 Accused Domains) in its Parked Pages Program, GoDaddy required the registrant to: (1) certify his or her right to use the domain without infringing any third-party marks or violating any state or federal law”. It stated  that Go Daddy had reason to rely on the representation made by its customers, that any registrations made by them was not infringing on a third party’s trademarks. Also, any trademark infringement that had occurred due to GoDaddy’s use of domain names that were confusingly similar to the Academy’s trademarks through its automated processes, was not intentional. The Court also recognized the fact that GoDaddy played an active role in protecting third party marks. According to its trademark policy any trademark holder could report an incident of cybersquatting, after which GoDaddy would remove all advertisements from the concerned domain.

The District Court said that the problem or the reason the Academy lost was its faulty “theory of liability under the Anti-cybersquatting Consumer Protection Act”. The nature of the claims put forward by the Academy were such that if allowed, they would have “imposed upon GoDaddy the unprecedented duty to act as the internet’s trademark police. The ACPA did not impose such sweeping obligations.”

The law suit was an important decision with respect to cyber squatting. The Academy was hoping to win $30 million dollars in damages.

Authored by Anchita Sharma

Sources- here, here, here, here and here