Summary

  • A trademark owner's request reached the company that maintained and forwarded two domain names, but the request did not itself decide the registrant's bad-faith intent.
  • The Ninth Circuit held that the Anticybersquatting Consumer Protection Act creates no claim for contributory cybersquatting; the UDRP and the statute instead route adjudication and implementation through separate actors.

The request reached an operational switch

The case began with two names that looked designed to trade on the PETRONAS mark: petronastower.net and petronastowers.net. A third party registered them in 2003 through another registrar. In 2007, the holder transferred the registration service to GoDaddy and used GoDaddy's forwarding service to direct visitors to an adult website hosted by somebody else.

That sequence matters because three functions can look like one from the outside. The registrar maintained the registrations. Its customer configured forwarding. A third party hosted the destination. Control existed at each layer, but it was not the same control.

In late 2009, a Petronas subsidiary asked GoDaddy to act. Malaysian and United States officials also contacted the registrar. According to the appellate record, GoDaddy investigated but did not alter the names because it did not host the destination and understood the Uniform Domain Name Dispute Resolution Policy to keep registrars out of deciding trademark ownership disputes.

The visible question was therefore tempting: if the registrar could keep the names active and operate forwarding, why should it not be responsible after notice? The legal question was narrower: did the ACPA contain a cause of action for contributory cybersquatting against an intermediary that was not alleged to possess the registrant's own bad-faith intent?

Forwarding did not erase the legal layers

The district court did not treat the technology as irrelevant. It allowed limited discovery to clarify what GoDaddy did with the names and whether forwarding or routing formed part of registration services. It then granted summary judgment to GoDaddy. On appeal, Petroliam Nasional challenged only the rejection of contributory cybersquatting.

That scope is essential. The Ninth Circuit was not deciding whether every registrar service is neutral, whether every forwarding choice is harmless, or whether a registrar can never face liability under another claim. It was deciding whether judges could read a secondary-liability action into the ACPA.

The court said no for three connected reasons. First, the statute imposes liability on a person who, with a bad-faith intent to profit, registers, traffics in or uses a domain name. It does not expressly create secondary liability for maintaining a name for somebody else. Second, the ACPA created a distinct statutory cause of action rather than merely codifying the common law of trademark infringement. Third, adding intermediary liability would work against the statute's design by forcing providers to infer a customer's subjective intent across enormous portfolios.

The court was especially concerned about false positives. A risk-averse registrar receiving a plausible demand could disable a lawful name even when the mark holder could not prove an ACPA case. Operational control would then become private adjudicatory power.

The UDRP supplies a route, not a registrar verdict

The 2009 Registrar Accreditation Agreement required registrars to maintain dispute procedures and comply with the UDRP. That policy places the merits before an approved panel: the complainant must establish confusing similarity, the holder's lack of rights or legitimate interests, and registration and use in bad faith.

The registrar has a different job. Under the policy, it does not administer or decide the proceeding. It changes a registration after instructions from the holder, an order from a competent court, a panel decision, the registration agreement or another legal requirement. It also preserves the status quo while the defined process runs.

This division is not an excuse to discard notices. A notice can trigger investigation, evidence preservation, abuse routing and an explanation of available remedies. It simply is not the same legal object as a panel decision or court order.

The judgment leaves other doors open

The Ninth Circuit identified remedies that did not require inventing contributory cybersquatting. A mark holder could pursue the direct cybersquatter. If the registrant could not be found or sued personally, the ACPA provided an in-rem action against the domain name. Traditional direct or contributory trademark claims also remained available where their separate elements were satisfied.

This is why the case should not be reduced to a slogan that registrars are immune. The holding is claim-specific. It rejects contributory cybersquatting under the ACPA. It does not bless bad-faith conduct by a registrar, erase duties to implement a valid decision, or decide liability under a different body of law.

Evidence limits

The opinion does not disclose the full forwarding configuration, internal notice records, traffic, revenue or quantified consumer harm. It does not identify every remedy Petroliam Nasional may have pursued outside the appealed claim. Later changes to ICANN agreements and registration-data policy should not be projected backward into the 2013 holding.

The durable finding is institutional: the actor that can flip a technical status is not automatically the actor authorised to decide the contested facts. Good governance specifies who receives evidence, who adjudicates, who preserves the asset and who executes the result.

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