U.S. Entrepreneur Fights Nissan in Web-Address Squabble -

Wednesday 6:53 pm ET

RALEIGH, N.C. October 2, 2002 The Associated Press asks "what do a Japanese auto giant and an Israeli immigrant computer entrepreneur have in common?

A name, and a fight over who should get to use it on the Internet.

Nissan Motor Corp. has the fame. Uzi Nissan has the domain names "nissan.com," for a company that sells computer hardware and networking services, and " nissan.net," for a small Internet service provider.

A federal judge in Los Angeles ruled last month that Mr. Nissan's use of his Internet sites was diluting the value of the car company's trademark.

U.S. District Judge Dean D. Pregerson is expected to decide by November whether the coveted Internet addresses go to the auto maker or stay with the man who's used his family name on a succession of businesses -- from mobile auto repair to exporting to computers -- since he came to Raleigh two decades ago.

"The remedy we think is appropriate is the transfer of the domain name registration," said Leland Dutcher, a staff attorney for Nissan North America Inc. in Gardena, Calif.

Mr. Nissan and his attorney, Neil Greenstein, declined to comment on the case until after the judge rules on remedies, which could include giving the Web addresses to Nissan Motor Co. or awarding monetary penalties.

But Mr. Nissan, whose family name is also the name of a month in Hebrew and Arabic, said the battle has never been fair.

"They already own and can readily use nissanmotors.com," he wrote on a Web site dedicated to his case. "Their attempt to make us switch from a domain name that we have used for years, without complaint by them, exhibits that this is really an attitude that they are the big guy and can take whatever they want."

Mr. Nissan's effort to tip the scales of justice in Nissan vs. Nissan for the little guy, by putting public pressure on the corporate giant, is what separates the case from scores of other battles over Internet names. It is also a move that may have ended up hurting Mr. Nissan in court.

Jonathan Zittrain, executive director of Harvard Law School's Berkman Center for Internet and Society, said such domain-name lawsuits have diminished in recent years. That is due to two things: uniform-dispute-resolution policies adopted by the group that has had oversight of the domain name system since 1998, and the resolution of disputes over names "registered in the era before companies realized their value."

Corporations that have spent heavily to build brand awareness can have an advantage in such trademark-infringement lawsuits because they're better able to prove the issue of fame, a key element in deciding such cases, Mr. Zittrain said.

Judge Pregerson ruled early on that Mr. Nissan wasn't a "cybersquatter," the name for Internet speculators who register sought-after names for about $30 a year, hoping to resell them for hundreds or thousands of dollars. He registered nissan.com in 1994 as a home page for Nissan Computer Co., which he founded in 1991. He registered nissan.net in 1996.

The auto company didn't sue until 1999, but the judge said that five-year wait wasn't too long because Nissan didn't initially know the impact the Internet would have on business.

"By 1999, the Internet had transformed into an essential marketing tool, with the ability to reach millions of potential customers throughout the United States and around the world," said Judge Pregerson.

The court said Mr. Nissan altered his Web site at that time to add advertisements and links to three online car buying and research sites.

"Clearly, NCC was capitalizing upon the traffic that was coming to ` Nissan.com' in search of Nissan Motors," the judge ruled.

The car company said the case has never been about Mr. Nissan having a company that uses his name. It has registered the domain name nissancomputer.com, and Mr. Dutcher said the company will give that Web address to Mr. Nissan if he's ordered to turn over his domains to the car company.

Mr. Dutcher argued that Mr. Nissan's use of the Nissan name by itself in his Web addresses dilutes the brand the auto maker spent $400 million to promote in the U.S. in a single year.

"We've always seen this case as protecting the Nissan brand and not about money," he said. "What we are saying is the word Nissan by itself is our registered trademark and we're the only ones with the right to use the name Nissan by itself."