Case provides ammunition for domain name registrars and domain parking companies in cybersquatting claims.
A court has found in GoDaddy’s favor in a long running cybersquatting battle brought by the Academy of Motion Picture Arts and Sciences. The 128-page decision (pdf) has lots of findings that will be cited in cybersquatting lawsuits for years to come.
Academy of Motion Picture Arts and Sciences (AMPAS) is responsible for The Oscars, formally known as the Academy Awards.
It sued GoDaddy in 2010 because GoDaddy customers were registering domain names that allegedly contained AMPAS marks, and these domains were then parked with GoDaddy’s free and paid parking programs. AMPAS thus charged that GoDaddy was violating the Anticybersquatting Consumer Protection Act (ACPA).
Judge Andre Birotte disagreed in an opinion dated yesterday.
Birotte cited nine reasons that he did not think GoDaddy had a bad faith intent to profit off of AMPAS’ marks:
1. GoDaddy relied on representations by registrants that the domains didn’t violate 3rd party trademarks.
Customers made this representation and gave GoDaddy a license to park the domain names. As a service provider, it could rely on these representations.
2. The automated nature of registration by third parties and the automated routing to parked pages.
GoDaddy didn’t target or otherwise select any of the accused domains to use in its parked domain program, nor did it select the ads that showed up. Google handled that. I wonder if the “it was Google” argument can be applied more to individual cases or UDRPs?
3. GoDaddy made efforts to assist brandholders.
In fact, the judge considered GoDaddy a leader in this area. GoDaddy has a number of programs to assist trademark holders, including to remove ads from parked pages.
GoDaddy filed a patent application for “Systems and Methods for Filtering Online Advertisements Containing Third-Party Trademarks”, but GoDaddy hadn’t implemented it as of 2011 because it was difficult to do in practice.
There are so many trademarks and so many common words as trademarks. The data size is huge, and many trademarks contain one or two letters. In fact, when GoDaddy started to develop a system to search for trademark matches in 2013, a trial run returned flags on 99.4% of all domains.
In December 2014, GoDaddy decided to implement a system that blocks ads only on domains that match a limited set of 1,400 trademarks. Even with this, when it ran a filter against all 50 million domains registered with it, 5 million were flagged for manual review.
Some of the domain names AMPAS accused of infringing its marks were not cases of infringement. For example, TheOscarTeam.com was registered by real estate agent Oscar Hernandez. Stand-up comedian Oscar Sagastume registered OscarComedy.com. Five of the domains were registered by Online Data Exchange, which has a US trademark for “Oscar”.
4. Google controlled the ads, and Oscar can be used for a number of purposes.
Judge Birotte wrote:
If the Court were to rule that it was a violation of the ACPA for GoDaddy to allow the posting of any advertisement on a domain name containing the word “oscar,” then GoDaddy would be liable if it hosted the websites for “oscarmayer.com,” “oscardelarenta.com,” or “oscarscarwash.com.” Such an overbroad reading the ACPA must be rejected.
This is a common argument from domain name registrars and domain parking companies.
Also, should the parking company be held responsible for which ads Google publishes? This is an especially good question now that Google serves the ads directly through an iFrame and the parking company has little control over them.
Some of the screenshots for the Accused Domains do, however, display third-party ads provided from Google that reference, either directly or indirectly, the AMPAS Marks along with other ads that do not reference the AMPAS Marks. But as the Court has found above, while GoDaddy contracted with Google to provide ads to its Parked Page Programs, GoDaddy did not control the content of those Google ads, did not receive the Google ads (after 2009), did not publish the Google ads (after 2009), did not know the content of the Google ads before they were sent by Google to Internet users visiting the sites, and GoDaddy could not predict which ads would be served by Google on the Accused Domains. Under these circumstances, the Court concludes that GoDaddy could not have intended for particular ads referencing AMPAS Marks to be sent by Google to Internet users visiting GoDaddy’s Parked Pages. While GoDaddy may have intended that Google provide ads to visitors to GoDaddy’s Parked Pages, there is no evidence that GoDaddy subjectively intended for Google to provide ads relating to the AMPAS Marks.
5. GoDaddy employees said there was not a bad faith intent to profit.
The judge cited testimony from Aftermarket Director Paul Nicks and Domain Services Supervisor Jessica Hanyen.
6. The near immediate cessation of showing ads on a parked domain upon accusation.
GoDaddy had a number of programs for trademark holders, including a VIP program. The judge pointed out that it’s not just GoDaddy’s responsibility to filter trademarks; it’s part of AMPAS’ duty to enforce its trademarks.
7. GoDaddy’s decision to filter AMPAS related domain names.
8. GoDaddy didn’t promote or send traffic to the accused domains.
221 of the 293 accused domains generated no PPC rev at all. All told, GoDaddy earned less than $400 from the domains. Here’s an interesting conclusion from the judge, which could be used in future cybersquatting cases:
If GoDaddy intended to profit from any of the AMPAS Marks contained in the Accused Domains, GoDaddy would have made specific efforts to drive relevant traffic to each of them. It did not do so.
The judge is aware that much of the traffic to parked pages is type-ins, and apparently was not too concerned about type-in traffic so long as GoDaddy didn’t purposefully send extra traffic to the domains.
Also, the judge noted that AMPAS didn’t present a single example of someone being confused by the domains and their ads. AMPAS didn’t prove harm.
9. Interest based advertising triggered many of the AMPAS mark-related ads.
GoDaddy implemented Google’s interest based advertising on parked pages in 2011. This is when an ad is shown to you based on your previous browsing behavior. As it turns out, a lot of the cases that AMPAS representatives though were parked pages showing ads triggered from their marks were actually just interest ads (because, naturally, they had previously visited AMPAS websites).
Here’s another interesting finding from the judge:
To the extent Google used one or more of the AMPAS Marks to trigger the placement of advertisements on a parked page, it was a nominative fair use.
Here are some other tidbits from the decision:
- AMPAS itself was advertising on GoDaddy’s parked domains, promoting Oscars.com and its YouTube channel through Adwords. AMPAS even purchased 3rd party trademarks as keywords, such as The Beatles, Gladiator and Tom Cruise.
“Indeed, AMPAS expressly approved Google’s placement of AMPAS advertisements on GoDaddy parked pages from 2008-2010 as part of its participation in Google’s AdWords program,” Birotte wrote.
- GoDaddy made $6.7 million from parking in 2010 including CashParking subscription fees.
- GoDaddy dumped parked page pop-ups because, as Paul Nicks stated, “[t]hey weren’t bringing very much revenue in, and they were annoying.”
Finally, here’s one summary paragraph I believe sums up ACPA nicely for this case:
The ultimate inquiry for the Court under the ACPA is whether AMPAS has shown by a preponderance of evidence that GoDaddy had a subjective bad faith intent to profit from the AMPAS Marks. It is not sufficient under the ACPA for AMPAS to prove that GoDaddy had an intent to profit from its Parked Page Programs. Nor is it sufficient for AMPAS to prove that infringing domains were sometimes registered by GoDaddy’s customers and automatically enrolled by GoDaddy in the Parked Page Programs if no DNS was entered by the registrant for their domain name at the time of registration. Congress did not enact strict liability or a negligence standard in the ACPA. It required proof that a defendant registered, used, or trafficked in a domain name with the specific, subjective intent to profit in bad faith off a person’s trademark.
Update: Here’s a comment from GoDaddy Executive Vice President and General Counsel Nima Kelly:
GoDaddy has always supported brand owners in protecting their intellectual property rights. Today’s decision validates GoDaddy’s industry-leading practices, which seek to protect the legitimate interests of both our customers and brand owners. We are gratified that the court has resolved the case in our favor.