‘Parked' Domain Name Program Is Not Cybersquatting

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By Anandashankar Mazumdar

Sept. 11 — Domain name registrar GoDaddy's “parked” domain name program did not constitute cybersquatting on trademarks owned by the organization that awards the Oscars, the U.S. District Court for the Central District of California ruled Sept. 10.

Granting judgment in favor of the world's largest domain name registrar, the court said that the Academy of Motion Picture Arts and Sciences failed to show that GoDaddy had acted in bad faith in allowing customers to register and “park” domain names that incorporated trademarks such as “Oscar” and “Academy Award.”

GoDaddy was not acting in bad faith, even when parked pages were generating advertising revenue through Google Inc.'s AdSense for Domains program, the court said.

The court said that GoDaddy's general intent to profit from its parking program did not translate to a specific bad faith intent to profit from using the academy's trademarks.

Furthermore, the court pointed to GoDaddy's own industry-leading efforts to police trademark violations by its customers that went beyond its legal obligations.

Given those efforts, the court rejected the academy's argument that GoDaddy had the technological capacity to do even more to protect the academy's trademark interests.

GoDaddy Serves Google Ads to ‘Parked' Pages

GoDaddy.com LLC, founded in 1997 in Scottsdale, Ariz., is the world's largest registrar of domain names.

When a user registers a domain name with GoDaddy, and does not yet have an Internet protocol address to supply for the associated website, GoDaddy offers several options.

If the user chooses to “park” the website for the time being through the registrar's “Free Parking” or “Cash Parking” programs, then GoDaddy's server automatically serves up content on a rotating basis when an Internet user accesses the registered domain name.

GoDaddy can then earn income through Google ads placed on the parked website content.

Academy Objects to Ad Service

The Academy of Motion Picture Arts and Sciences, founded in 1927, hosts the Academy Awards and annually presents Oscar trophies to those who have been chosen for their work in the movie industry.

The academy holds several trademark registrations, which include variations of the terms “Oscars” and “Academy Awards.”

In 2010, the academy sued GoDaddy alleging that its Parked Pages program had violated the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. §1125(d), and was engaging in unfair and unlawful conduct under California state statute, Cal. Bus. & Prof. Code §17200 et seq., and unjust enrichment and conversion under California state common law.

No Complaint Against Websites or Registrants

The academy identified about 300 domain names incorporating variations of terms such as “Oscars” and “Academy Awards,” and objected not to their registration but to their inclusion in GoDaddy's parking program.

Indeed, the court noted that many of the registrations or their associated websites were not themselves in violation of trademark law or anticybersquatting law. For example, the domain name oscarcomedy.com was registered by a stand-up comedian named Oscar Sagastume.

Additionally, the Patent and Trademark Office had permitted many third parties to register trademarks incorporating the term “Oscar,” the court said.

Furthermore, the advertisements served to parked pages by Google often included the academy's own ads, the court said.

The total revenue earned by GoDaddy from the 300 parked domain names added up to little more than $100, the court said, and it found no evidence of injury to the academy in terms of actual confusion, trademark dilution or diversion of Internet traffic.

The court emphasized GoDaddy's own efforts to protect third-party trademark rights and its voluntary creation of a trademark infringement policy, through which trademark holders could seek resolution of disputes with domain name registrants.

‘Unique Circumstances' Defeat Bad Faith Finding

Following a bench trial, the court said that the sole remaining issue was to determine whether any bad faith could be attributed to GoDaddy in implementing its parked pages program.

In finding that there was no bad faith intent to profit, the court identified several “unique circumstances,” including that:

• GoDaddy had “reasonably relied in good faith on the representations made by the registrants of the Accused Domains stating that the registration of those domains did not violate any third party trademark rights”;

• the “automated nature of the registration by third-party registrants and the routing and parked page processes for the Accused Domains refutes a finding of bath faith intent to profit”;

• GoDaddy made “efforts to assist brand owners,” including the academy itself, “in protecting their intellectual property rights”;

• Google, not GoDaddy, controlled what ads were displayed on the parked domains;

• GoDaddy's witnesses were credible when they denied acting with any bad faith intent to profit from the academy's trademarks;

• GoDaddy implemented “near-immediate cessation of any alleged use of a domain name in its Parked Page Programs, whether pre-or post-litigation”;

• despite believing that it was acting lawfully, GoDaddy immediately filtered out domain names that incorporated the academy's trademarks when the court determined that it had used or trafficked in the domain names identified by the academy;

• GoDaddy had not promoted the domains in question and had not made efforts to drive Internet traffic to them; and

• GoDaddy changed 130 of the parked pages to “interest-based advertising” to display ads based on the individual Internet user's interests.


Going through the nine bad-faith factors enumerated in the ACPA, the court found no evidence presented at trial supporting a finding of bad faith.

The court's ruling was issued by Judge Andre Birotte Jr.

The academy was represented by Boies Schiller & Flexner LLP, Santa Monica, Calif. GoDaddy was represented by Wilmer Cutler Pickering Hale & Dorr LLP, Palo Alto, Calif.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

Text is available at: http://www.bloomberglaw.com/public/document/Acad_of_Motion_Picture_Arts__Scis_v_Godaddy_No_CV_1003738_AB_CWx_

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