A story in the Hollywood Reporter of all places has landed domain name registrar Godaddy.com on the front pages

The story talks about the lawsuit that the Academy of Motion Picture Arts and Sciences has against GoDaddy.com for “allegedly trafficking in unauthorized trademarks. The Film Academy (AMPAS) takes issue with GoDaddy’s “CashParking” program wherein its customers are allowed to buy a domain like Oscarbets.com or Oscarsornot.com, “park” that page and collect a portion of revenue from GoDaddy’s advertising partners on a pay-per-click basis.”

“In the process, GoDaddy has raised a provocative argument —  that the Film Academy hasn’t done its job in showing that “Oscar” or “Oscars” has enjoyed a level of fame so great that the trademarks can be diluted by others.”

“In papers submitted to the court on Monday (read here), GoDaddy says “AMPAS seeks a finding that each of its marks are famous as a matter of law. AMPAS has not met its burden.”

 

“The registrar giant commissioned Carol Scott, a marketing professor at UCLA, to assess consumer perceptions of 75 domain names alleged to be infringing the Film Academy’s marks. The survey was done in January, and 19,047 consumers were shown various domain names and asked, “What product(s), service(s), organization(s), activity(ies), or any associations, if any, come to mind?”

 

“According to the results, of the 75 domain names, one domain name — oscarsornot.com — was highly associated with entertainment. ”

“Almost 49% of respondents said that domain was entertainment-related. But other domain names — ranging from dermoscars.com and oscarkids.com to traveloscar.com and oscarshotel.com — experienced much lesser association.”

 

“”For only one of the domain names did net associations with the Academy’s marks exceed 15%,” writes Scott in her conclusions. “I conclude that 74 of the 75 domain names that I tested are not confusingly similar to the Academy’s marks since no associations related to them come to mind for most consumers.”

 

Godaddy.com according to the story “also commissioned an expert report from Geoffrey Nunberg, a linguistics professor at the University of California at Berkeley.:

“Here’s Scott’s full report (Exhibit D) and here’s Nunberg’s full report (Exhibit M). One might wonder whether the two reports are logically consistent. Scott is dubious about the fame of the Oscars while Nunberg essentially says that the Oscars are so famous, the word can be casually employed in multiple contexts.”

 

“In its push for partial summary judgment (read in full here), the Film Academy says that GoDaddy ignores that the Anticybersquatting Consumer Protection Act “requires only straight-forward comparison with the marks. It is improper to compare the purported goods and services of the infringing domain names with those of the Academy or to employ the likelihood of confusion analysis used in trademark infringement suits.”

 

“The Film Academy would rather have the judge focus on the allegation that GoDaddy “used” and “trafficked” in infringing domain names, exercised control over its service, knew what the alleged infringers were up to, and monetized use of its marks. The Film Academy also says that GoDaddy was itself the registrant of three domain names, including 2006AcademyAwards.com, AcademyAwardsShow.com and TheAcademyAwardsLive.com.”