The US Supreme Court has refused to hear an appeal by car giant
Nissan Motor Co over the domain names Nissan.com and Nissan.net,
following a decision by a California Appeals Court not to order the
transfer of the domains, according to the Los Angeles Times.
US entrepreneur Uzi Nissan registered nissan.com in 1994 to
front his computer hardware company, Nissan Computer. He also
registered nissan.net in 1996, for a small ISP that he founded.
Nissan Motors sued him in 1999 for $10 million, claiming that
the word Nissan is its registered trade mark and that the company
therefore has the exclusive right to use the name Nissan.
The entrepreneur, an Israeli immigrant, rejected the car
company's allegations arguing that Nissan is his family name and
also the name of a month in Hebrew and Arabic. Uzi Nissan also
pointed out that the Japanese auto giant already owns and can use
the domain name NissanMotors.com.
The case was considered in a series of hearings by a Los Angeles
District Court in 2002, in which the judge ruled firstly that bad
faith – a requirement of anti-cybersquatting legislation – could
not be proved on the part of Uzi Nissan, and the domains were not
transferred.
Later that same year the Court then ruled that, although Uzi
Nissan "is not a cybersquatter", he altered his web sites to add
advertisements and links to on-line car buying sites. The judge
also found that the entrepreneur was "clearly capitalising" from
the traffic that was coming to web sites in search of Nissan
Motors.
In November 2002, the Court issued a permanent injunction,
allowing Mr Nissan to keep his domains, but restricting the
commercial, advertising and anti-Nissan content that could be
placed on the web sites.
Mr Nissan appealed, and in August 2004 the 9th Circuit Court of
Appeals issued a mixed ruling, finding that Nissan Computer
capitalised on Nissan Motors' goodwill in the Nissan trade mark to
the extent that use of the mark for automobiles captured the
attention of customers interested in Nissan cars.
However, the Appeals Court said that Nissan could not gain
protection against any dilution of the trade mark resulting from
this because Nissan Computer had made its first commercial use of
the mark over five years before Nissan's mark became famous in the
US.
In addition, said the Appeals Court, a requirement that the web
sites did not contain links to anti-Nissan web sites was
inconsistent with free speech rights.
The Appeals Court accordingly reversed the ruling, ordering Mr
Nissan to refrain only from showing car-related adverts, and
remanded the case back to the District Court in Los Angeles, for
consideration as to whether the injunction should be broadened to
include the transfer of the domains.
The Nissan Motor Co appealed, firstly to the Court of Appeals
and then to the US Supreme Court. According to the Los Angeles
Times, both appeals have now been rejected.
