Commercial content banned from 'nissan.com' website

In Nissan Motor Co v Nissan Computer Corp, the US District Court for the Central District of California has found Nissan Computer, the registrant of the domain name 'nissan.com', and The Internet Center guilty under the Federal Trademark Dilution Act (FTDA) of diluting Nissan Motor Company's famous trademark through banner advertisements and hyperlinks.

Uzi Nissan, the owner of Nissan Computer, registered the domain name 'nissan.com' in 1994 to operate a website for computer-related information and services. In August 1999 the website began displaying banner ads, some of which included links to automobile merchandisers.

Nissan Motor filed a trademark infringement, dilution, unfair competition and cybersquatting action against Nissan Computer in December 1999. The following day, Mr Nissan, in the name of another of his ventures - The Internet Center (IC) - registered the domain name 'bestcarquote.com'. The 'nissan.com' website was linked to IC's 'bestcarquote.com', which displayed automobile-related links. IC was then added as co-defendant in Nissan Motor's lawsuit.

The federal court found that the three requirements to establish dilution under the FTDA had been met:

• Nissan Motor's NISSAN mark was famous as of 1994 when Mr Nissan registered the domain name 'nissan.com'.
  
  
• A series of links from 'nissan.com' to 'bestcarquote.com' and other sites, which brought some revenue to the defendants, established the defendants' commercial use of the NISSAN mark.
  
  
• The purpose of the series of hyperlinks from 'nissan.com' to various websites maintained by the defendants was to capitalize on the goodwill of the famous NISSAN mark. Because many of these links promoted the sale of automobiles, the NISSAN mark's ability to identify Nissan Motor's products was detrimentally affected.

As a result, in a subsequent ruling, the court issued a permanent injunction enjoining the defendants from posting commercial content on the 'nissan.com' website. The court did not, however, order the transfer of 'nissan.com' to Nissan Motor.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC