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.