Brand owners may want to nominate the Academy of Motion Picture Arts & Sciences for its own award. The organization, most famous for its Oscars awards ceremony, recently scored a significant trademark victory against the GoDaddy.com, Inc. over violations of the Anticybersquatting Consumer Protection Act (ACPA).
The lawsuit involves GoDaddy’s “CashParking” program, which allows registrants to purchase domains that resemble well known sites (i.e., AcademyAwardz.com), “park” the website, and collect a portion of the advertising revenue generated on a pay-per-click basis. The Academy alleges that GoDaddy has “used” and “trafficked in” domain names that are identical, confusingly similar, and/or dilutive of five of the Academy’s trademarks, with bad faith intent, in violation of the ACPA.
In defending the suit, GoDaddy attempted to rely on ACPA’s safe harbor provision for domain name registrars. It creates immunity for “[a] domain name authority” from claims for damages “for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.”
However, earlier this summer, a California federal judge rejected GoDaddy’s safe harbor claim, holding that registrars are not immunized from liability for conduct that goes beyond mere registration and maintenance of domain names, such as creating webpages, placing advertisements, and collecting ad revenue.
“The safe harbor provision simply does not apply to conduct, like operating the Parked Pages Program, that goes beyond mere registration and maintenance,” Judge Audrey Collins explained. “Furthermore, a registrar’s mere bad faith intent to profit – as opposed to actual profit – is sufficient to disqualify it from safe harbor protection.”
Parked domain names are big business, generating over $35 million a year for GoDaddy. If the Academy succeeds at trial, brand owners would be in a much stronger position to combat cybersquatting.