Ninth Circuit Rejects Claims for Contributory Cybersquatting Under the ACPA


On December 4, 2013, in Petroliam Nasional Berhad (Petronas) v., Inc., the United States Court of Appeals for the Ninth Circuit held that the Anticybersquatting Consumer Protection Act (“ACPA”) does not provide a cause of action for contributory cybersquatting.

Petronas is a Malaysian oil and gas company that owns the trademark PETRONAS.  It accused GoDaddy of contributory cybersquatting when a registrant used GoDaddy's domain name forwarding service to direct URLs incorporating the PETRONAS mark to a third party’s adult website.  Petronas contacted GoDaddy and requested that it take action against the adult website.  GoDaddy investigated the issue but took no action because it did not host the offending web site, and because it was prevented by the Uniform Dispute Resolution Policy (“UDRP”) from resolving trademark disputes regarding domain name ownership.

Petronas then asserted various claims against GoDaddy in the Northern District of California, including contributory cybersquatting.  After some discovery, the district court dismissed the case on summary judgment.  Petronas appealed only the contributory cybersquatting claim.  On appeal, the Ninth Circuit affirmed the ruling that the ACPA does not provide a cause of action for contributory cybersquatting.  The Ninth Circuit based its holding on its findings that (1) the plain language of the ACPA did not apply to the conduct that would be actionable under a contributory liability theory; (2) Congress did not intend to include common law trademark doctrines when enacting the ACPA; and (3) allowing suits against registrars for contributory cybersquatting would improperly expand the scope of the ACPA and undermine its provisions regarding bad faith and defining who "uses" a domain name.


Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Lewis Roca Rothgerber | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.