The 9th Circuit Court of Appeals yesterday affirmed a district court ruling holding that there is no cause of action for contributory infringement under the Anti-Cybersquatting Protection Act (ACPA) to domain registrars, ISP’s or other third parties. The action was brought by Petronas, owners of the famed Petronas tower in Malaysia and the holders of the trademark PETRONAS, who sued Go Daddy in district court when Go Daddy failed to take action over a third party registration of the domain name www.petronastower.net.
Petronas argued, inter alia, that the ACPA included a cause of action for contributory cybersquatting, and that the ACPA was based on principles of trademark common law, which include a cause of action for secondary liability, and therefore that the ACPA should as well.
The 9th Circuit however stuck to the plain text of the ACPA and even went so far as to admonish courts that had found registrars liable for contributory liability when there were “exceptional circumstances” stating that “this ‘exceptional circumstances’ test has no basis in either the Act, or in the common law of trademark.” It further explained that there were plenty of available remedies for trademark holders to use in cases of cybersquatting and that it was an “impossible task” to ask registrars and ISP’s to subjectively analyze the purpose of a domain registration and make them part of individual domain disputes.
Overall, the decision is a nice holiday gift to registrars, ISP’s, and (in the future) New gTLD operators who will be able to use the decision to insulate themselves from secondary liability under the ACPA...