The Fight for nissan.com
Nissan Motors is one the most reputable manufacturer of cars and automobiles in the world. They’re extremely famous and have products all around the globe. But what happens when you type in nissan.com in the address bar of your web browser? You would probably expect to be directed to the automobile giant’s website. However, that is not the case. Currently, Nissan Motors does not have ownership rights to nissan.com. Although they have similar domain names, nissan.com actually is owned by Uzi Nissan (“Uzi”). Nissan and Uzi fought vigorously over ownership rights to the domain name of nissan.com.
Who is Uzi Nissan?
Here is a brief summary of who Uzi Nissan is, which can be found on the nissan.com website:
[Uzi] was born in Jerusalem – Israel. He also states that “father’s last name was Nissan, his father’s last name was Nissan, and so on.” Thus, Nissan is Uzi’s personal name which he used for his business, Nissan Computer. To read more about trademarks and personal names, click here.
How did it all begin?
Uzi registered the domain name nissan.com to advertise Nissan Computer’s computer-related goods and services. Uzi Nissan obtained the domain name nissan.com and has used it for several years prior to the dispute.
In October 1999, Nissan Motors told Uzi Nissan that it wished to purchase nissan.com, but negotiations broke down. After, Nissan Motors filed a lawsuit against Nissan Computer on December 10, 1999 in which the complaint asserts claims for trademark dilution in violation of federal and state law; trademark infringement; domain name piracy; false designation of origin; and unfair competition.
By no means was this a small case. The case went all the way up the Ninth Circuit Court of Appeals and then some. Several issues and claims were brought and the case went on for more than 15 years. Although there were several issues in this case, the remanded issues that were litigated in the Ninth Circuit Court of Appeals will be discussed in further detail.
These include the trademark infringement by initial interest confusion and trademark dilution claims brought against Nissan Computer. Although the issue of cyber-squatting was resolved prior to the case going up to the Ninth circuit, it will also be discussed since it is highly relevant.
Trademark infringement by initial interest confusion
One of the claims that Nissan Motors brought against Nissan Computer was trademark infringement. Generally, trademark infringement occurs when the use of the same or similar mark would cause a likelihood of confusion. However, trademark infringement by initial interest is slightly different. The Ninth Circuit specifically states that “[i]nitial interest confusion occurs when the defendant uses the plaintiff’s trademark ‘in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.”
Another way of describing initial interest confusion would be when the consumer is initially interested in a product believing that it comes from one source when it really comes from another. However, at the point of sale, the consumer is no longer confused as to the actual source of the product. Although Uzi prevailed on the cyber-squatting claim, the Ninth Circuit found that there was initial interest confusion and stated that:
“Although Nissan Computer was not directly selling automobiles, it was offering information about automobiles and this capitalized on consumers’ initial interest. An internet user interested in purchasing, or gaining information about Nissan automobiles would be likely to enter nissan.com. When the item on that website was computers, the auto-seeking consumer “would realize in one hot second that she was in the wrong place and either guess again or resort to a search engine to locate” Nissan Motor’s site.”
The issue of infringement was then remanded to district court. On remand, the district court found that “posting a link on the Nissan.com site…[is] too attenuated to constitute infringement.”
Another claim brought against Nissan Computer is trademark dilution. There is trademark dilution when a trademark loses distinctiveness through another’s use of the same or similar trademark. There are two forms of dilution, which include blurring and tarnishment. Fame is generally required for a party to bring a dilution claim. In this case, the Ninth Circuit remanded the issue of dilution and ordered the lower court to assess the fame of Nissan Motor’s mark and that the lower court should also consider whether there was actually dilution.
After the long and bitter fight, the case was remanded where the district court found that Nissan Computer’s use of the mark was not dilutive. Click here to see the decision.
Since the mark at issue is also a domain name, Nissan motors brought a cyber-squatting claim. Cyber-squatting is “the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit.” Under federal law, a person may be liable in a civil action if that person has a bad faith intent to register, traffic in, or use a domain name that is identical or confusingly similar to a mark. However, the cybersquatting issue was resolved at the trial level in favor of Uzi.
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Disclaimer: This article is not intended to be legal advice and is meant to be for educational or entertainment purposes only. Please do not use the article or contents of the article without permission. For legal advice and questions, please contact registered Patent Attorney Vincent LoTempio.