GoDaddy Can't Strike Restitution, Attorneys Fees in 'Parked Pages' Case

Feb 20, 2014 12:45 PM PST

LOS ANGELES — In another stinging defeat for GoDaddy, a federal court last week denied the domain registrar's attempt to strike the Academy of Motion Picture Arts and Sciences' request for restitution and attorneys fees in a lawsuit alleging its Parked Pages program was involved in a cybersquatting scheme.

GoDaddy has been attempting to stave off claims that it infringed on and deliberately appropriated more than 100 of the Academy's marks with such domain names as OscarRedCarpet.com, OscarActor.com, AcademyAwards2015.com and BillyCrystal2012Oscars.com.

The suit seeks a restraining order over the practice of scooping up the Academy's trademarks and appropriating them through Parked Pages and another GoDaddy program, Cash Parking. It also seeks $100,000 in damages for every domain allegedly poached, as well as attorneys fees.

The case, alleging violations of the federal Anti-cybersquatting Consumer Protection Act and California business codes, is closely being watched by website operators, including online adult companies, that have found their marks being similarly poached and exploited.

While the Academy came ahead with U.S. District Judge Audrey Collins' decisions last week, she did grant GoDaddy a motion to dismiss two domain names — OscarCap.com and OscarMOnline.com — from the suit.

GoDaddy contended that 12 of the 107 domain names listed in the suit were dissimilar in sight, sound and meaning to the Academy’s "Oscar" marks.

"Both OscarCap.com and OscarMOnline.com include additional words or letters than render the 'Oscar' portion of the domain name relatively difficult to parse from the entire name," Collins ruled. "As a result, these domain names cannot be sufficiently suggestive of the 'Oscar' marks in sight, sound, or meaning to be 'confusingly similar.'"

The Academy, however, scored a giant coup over attorneys fees and restitution with Collins' ruling.

GoDaddy moved to strike portions of the complaint because California Business and Professions Code § 17200 does not provide for the recovery of attorneys fees. But Collins said the Academy cited that attorneys fees may be recoverable under Cal. Code Civ. P. § 1021.5, which provides that, “Upon motion, a court may award attorneys’ fees to a successful party against one or more opposing parties in any action which has resulted in the enforcement of an important right affecting the public interest."

The registrar also asked the court to strike restitution in the case because the Academy's complaint was "inadequately pled." Collins rejected that motion, and said she found the motion "inappropriate."

The Academy, in a brief last month, emphasized that the suit could spur additional litigation against Scottsdale, Ariz.-based GoDaddy.

The case "will certainly result in the enforcement of an important right affect the public interest," the Academy said in a motion. "GoDaddy purports to be the world’s leading ICANN-accredited domain name registrar for .com, .net, .org, .info, .biz and .us domain extensions, with over 40 million domain names under its management — more names than any other registrar.

"Further, GoDaddy and its affiliates offer their services in interstate commerce, affecting people all over the U.S. In turn, GoDaddy is harming trademark holders nationwide by monetizing domains utilizing their marks.

"If plaintiff is successful, this action will establish enforceable trademark rights of trademark owners nationwide as it related to GoDaddy’s parked page programs."

The suit narrowly focuses on how GoDaddy registers and monetizes parked domains through its Parked Page Service and Cash Parking Program.

GoDaddy parks registrants' pages and places advertisements on web pages with Parked Page Service; Go Daddy is granted the right to collect and retain all revenue generated by the advertising.

The Cash Parking Program service permits domain registrants to pay a fee to allow GoDaddy through its advertising partner to place ads on the registrant's web page. The revenue generated through that advertising is then split between the registrant, GoDaddy and GoDaddy' s advertising partner.

For GoDaddy, the case brought on by the Academy has meant one defeat after another.

Just last month, U.S. District Judge Dale S. Fischer issued an oral ruling denying the company's motion to disqualify Collins from the Academy's suit.  

Fischer in her ruling from the bench said there was no evidence that Collins is biased for the Academy because of a number of pre-trial rulings in favor of it and because her daughter is an actress who had small parts in "Deception," "The Producers" and other films.

GoDaddy, in its motion to recuse Collins, even alleged that multiple Academy officials privately refer to her as "the Academy's judge" and that most Academy cases have been funneled into her courtroom in recent years.

GoDaddy officials did not respond to XBIZ for comment on Thursday on Collins' latest ruling.

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