SSJR Successfully Defends Subpoena to GoDaddy Seeking Discovery Of Domain Names of Defendant in Cybersquatting Action

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The U.S. District Court for the District of Arizona dimissed motions to quash document subpoenas issued by SSJR to non-parties GoDaddy and Domains by Proxy. The subpoenas were related to a cybersquatting and trademark litigation brought by SSJR in federal district court in Illinois, under the Lanham Act. The plaintiff, represented by SSJR members Fritz L. Schweitzer III and Andy I. Corea, alleged that the defendant had registered Internet domain names that were confusingly similar to trademarks of plaintiff, in bad faith. Plaintiff also alleged that the defendant had registered domains confusingly similar to trademarks of others, demonstrating a pattern of unlawful conduct. On behalf of the plaintiff, SSJR issued subpoenas to non-party domain registrar GoDaddy and its affiliate Domains by Proxy seeking a list of all domains registered by the defendants – including private domain name registrations. A defendant moved to quash the subpoenas on the basis that the scope would encompass domains not similar to plaintiff’s marks. In an order dismissing the motions to quash, the Court adopted the position of the plaintiff, as asserted by SSJR. The Court held that “[w]hile the requested lists may reveal domain names not similar to plaintiff’s mark, those domain names may be relevant if they infringe on other entities’ marks, thereby demonstrating a pattern of unlawful conduct. See 15 U.S.C. § 1125 (d)(1)(B)(i)(VIII) (in determining bad faith intent in action for cyberpiracy, court may consider defendant’s registration of multiple domain names identical or confusingly similar to marks of others). Because the requests are tailored to allow plaintiff’s counsel to review all domain names for actionable activity as well as evidence of a pattern of misconduct, the subpoenas are not overly broad.”