August 03, 2000

KUALA LUMPUR, MALAYSIA, 2000 AUG 03 (NB)

Using one's own name for a dotcom may sound logical, but what if you just happen to share the name with a major corporation or celebrity? Well, be prepared to shell out the legal tab to protect it. Ask Mr Uzi Nissan, he should know.

An Israeli-American born in Jerusalem, Nissan registered the domain name nissan.com in May 1994. The site was to expand his Raleigh, North Carolina-based computer business called the Nissan Computer Corporation (NCC) started in 1991.

Nissan first got wind that the Japanese auto-maker Nissan Motor Co Ltd was upset with him when their senior legal counsel sent him a letter expressing "concerns" in July 1995. "I chose not to respond because I believed it was clear we were a computer company and that there was no conflict," he explains on his website ncchelp.org.

That same month in 1995, however, just to be safe, Nissan registered a trademark for Nissan Computer and a logo in the State of North Carolina. In March 1996, Nissan also registered the domain name nissan.net to expand into Internet dial-up services as well.

For a while it seemed the car-maker had forgotten him and moved on. Its California-based American subsidiary Nissan North America Inc registered the name nissan-usa.com in August 1996.

Three years down the road, however, the car-maker's representatives approached Nissan in an attempt to "negotiate" a transfer. But the talks collapsed and legal swords were drawn.

On December 10 1999, the car-maker filed suit in a California district court for trademark dilution and domain name piracy. The very next day, Nissan, now the defendant, went on the offence online and registered the website ncchelp.org to publicize the action.

"Nissan Motor is trying to bankrupt me and my companies by forcing me to cease using the Nissan name and incurring the high cost of mounting a defense," said Nissan in his maiden press release. He estimated legal costs to be between US$250,000 and US$1 million. "It's my legal last name after all and they have no right to it. I feel like David against the Japanese Goliath," he stated.

According to court documents, what raised the heckles of the car-maker were alterations made on the disputed site in August, 1999. Nissan Motor claimed the site displayed a "Nissan Computer" logo that was allegedly "confusingly similar" to the car-maker's and had banner advertisements and links to automobile-related sites.

In March this year, the court granted a preliminary injunction in favor of Nissan Motor. To avoid customer confusion, Nissan Computer was ordered to post a prominent disclaimer of any connection to Nissan Motor on the nissan.com and nissan.net websites, and also identify Nissan North America's website. It also ordered Nissan Computer to refrain from displaying automobile-related information, advertisements, promotions, or links on the sites.

Nissan Motor, however, was ordered to post a US$100,000 bond, in case Nissan Computer was found, later, to be wrongfully restrained. The temporary injunction is presently on appeal, and the court has not set a trial date yet.

In an email response to Newsbytes, Uzi Nissan says his lawyers filed a counterclaim in April. He contends he is a victim of what is known in Internet parlance as "reverse domain name hijacking".

Domain name policy-maker Internet Corporation for Assigned Names and Numbers (ICANN) defines "reverse domain name hijacking" as a "bad faith" effort by a trademark owner to obtain a domain name that incorporates the owner's trademark from a good faith, legitimate domain name registrant.

"My lawyers have alleged that Nissan Motors filed the lawsuit against me hoping to bully me into giving up my domain name," said Nissan.

Nissan denies he is a "cybersquatter" hoping to cash in on the domain name. "I have used this domain name for my business continuously since 1994, and never offered to sell or transfer it to anyone. Nissan Computer has never been in the business of registering domain names of famous or well-known trademarks of others."

Nissan contends he had every right to use the moniker. The name, after all, has been his family name for seven generations and its use can be traced to biblical days. In fact, the word "nissan", he says, is the contemporary name for the seventh month in the Hebrew calendar and is also Arabic for the month of April.

Nissan added he had been using his name in various enterprises since coming to America in 1976, long before the car-maker switched its flagship brand-name from Datsun to Nissan. Ironically his first business in 1980 was named Nissan Foreign Car Mobile Repair Service, which serviced various makes and models including Datsun cars.

Nissan's ncchelp.org site hosts an array of personal and company documents backing his claim, including a 1982 invoice from a Datsun dealer for the purchase of an antenna addressed to his then company Nissan Foreign Car. The site even has a picture of an old company van owned by Nissan with the vanity license plate - "NISSAN".

Not surprisingly, the site has been flooded with hundreds of email responses, most of which are sympathetic to his cause, and some even promising to boycott the car-maker.

Nissan is adamant about pursuing the case all the way. "My lawyers and I have identified more than 190 third-party uses of the word Nissan, mostly as a business or trade name, and most having nothing to do with cars. I am fighting for the rights of small business owners, but mostly I want to keep my family name in my business. My case may have value as precedent for others who happen to share their family or legitimate business names with owners of trademarks. I cannot see any prospects for an early resolution of the case and so am going to take it all way to the Supreme Court if I have to," he said.

Uzi Nissan's case is one of numerous domain names that have been the subject of disputes lately.

Many corporations are just recognizing the value of their online names and have begun to use their financial and legal muscles to bear down on registrants to "reclaim" their stakes on the Internet landscape.

Since ICANN approved a dispute resolution policy last year, it has recorded 2,262 proceedings filed between December 1999 and August 1 this year.

Ellen Rony, co-author of The Domain Name Handbook, said domain name litigation is likely to continue to rise. "Trademark owners are using the dubious notion of 'bad faith' to claim rights to domain names that they were simply too late to acquire. The legal disputes are not likely to abate. I foresee intellectual property attorneys with expertise in domain names will be in great demand," she said.

A diligent documentor of various disputes on her website domainhandbook.com, Rony believes ICANN's new generic top level domain names (gTLDs) such as .shop and .travel will only increase the squabbling.

"One cannot fit 100 pounds of names into a 10-pound bag. The domain name system requires that every name must be unique. This is completely at odds with the trademark system, which allows multiple identical uses of the same word/s so long as they are used in connection with different goods and services and/or in different geographic areas," she said.

However, Rony believes the problem lies not with the naming system but rather with the trademark owners. "Trademark owners have expansive new tools to indulge in reverse domain name hijacking. They believe their marks entitle them to 'rights in gross' i.e. exclusive worldwide rights to use of the mark. That is simply unworkable and inappropriate in this global naming mechanism."

Rony is of the opinion Uzi Nissan should be allowed to keep his domain name. "I would staunchly defend his right to do so. He has a legitimate nexus to the name and has a legal right to use it for bona fide offer of computer goods and services or for any non-commercial purposes."

Rony, however, qualifies that Nissan may have "run afoul of the slippery slope of trademark dilution" when he chose to promote auto-related products and services on his site as the plaintiff claims. "If he had stuck to computer related goods and services, the auto manufacturer would have a more difficult time pursuing a case against him."

Corporations also find it hard to keep up with protecting their names from being used in countless variations on the Web. A simple search for the word "nissan" for instance throws up over 2,000 registered dotcom domain names such as mynissan.com, mrnissan.com, and 1800nissan.com.

Rony believes domain name cases should be decided upon the content offered at a website, not upon the domain name alone. "The domain name alone - absent of contextual use - does not justify legal action because it is a web address, nothing more. It's akin to two hotels on the same street bearing similar names derived from street name, it's just an address."

In the case of personal names of celebrities, however, disputes become more complicated and decisions can swing both ways. Actress Julia Roberts recently prevailed in a complaint to the United Nations' World Intellectual Property Organization arbitration panel against Russell Boyd of Princeton, New Jersey, who had been the first to register juliaroberts.com. Musician Sting, however, lost out to a computer game player who registered sting.com and claimed he had been using the name on the Internet for eight years.

Rony does not believe that priority rights should go to a celebrity over another individual who has the fortune or misfortune of being born with the same name. "It should be first come, first served. When musician Don Henley went after another Don Henley who registered don-henley.com, or entertainer Dennis Miller tries to get a domain name away from Dennis Miller, a physician, the disputes just smack of celebrity hubris."

Other domain names of famous people still in dispute include bradpitt.com, tinaturner.net, jimihendrix.com and julioiglesias.com.

Rony points that even domain names seemingly made up of words or phrases in common currency have been the subject of disputes such as zero.com, streetwise.com and buyerschoice.com. Registrants sitting on generic dotcom names, such as pub.com, place.com and corp.com, hoping they will appreciate in value, may also not be safe from legal action.

"An unused generic domain name is going to be a target of every trademark-owner that has registered the word as a trademark. Probably every common word in the dictionary is also registered as a trademark." Rony maintains a list of common dictionary words that are registered trademarks but may be the subject of dispute as domain names at her site at http://www.domainhandbook.com/wordsfirst.html

Her advice to domain name registrants is use it or lose it. "The best way to prevent a lawsuit is to use a domain name in good faith, to offer bona fide goods or services, or to use it for a non-commercial purpose."

In the case of Uzi Nissan, even that was not enough.

Published in Newsbytes