Nissan Motor Co., Ltd. v. Nissan
States District Court - Central District of California
No. CV 99-12980 DDP (Mcx)
Decision of March 23, 2000
89 F. Supp. 2d 1154
defendant's motion to dismiss and the plaintiffs' motion for a preliminary
injunction came before the Court for oral argument on March 13, 2000. After
reviewing and considering the materials submitted by the parties and hearing
oral argument, the Court adopts the following order.
Plaintiff Nissan Motor Co., Ltd., is a large Japanese automaker. Its subsidiary,
plaintiff Nissan North America, Inc.,
markets and distributes Nissan vehicles in the United States. Nissan Motor Co.
owns, and Nissan North America is the exclusive licensee of, various registered
trademarks using the word "Nissan" in connection with automobiles and
other vehicles. (Rinek Decl. ¶¶ 4-5.) The first such trademark was registered
in 1959. (Id.) Nissan North America also operates an Internet website at
The defendant, Nissan Computer Corporation, is a North Carolina company in the
business of computer sales and services. The company was incorporated in 1991 by
Uzi Nissan, its current president. (Nissan Decl. re: Prelim. Inj. ¶ 6.) Mr.
Nissan has used his surname in connection with various businesses since 1980. (Id.
¶¶ 2-3.) Nissan is also a term in the Hebrew and Arabic languages. (Id.
¶ 2 & Ex. 38.) In 1995, the defendant registered a trademark for its Nissan
Computer logo with the state of North Carolina. (Id. Ex. 45.)
The defendant registered the Internet domain names "nissan.com" and
"nissan.net" in May 1994 and March 1996, respectively. (Compl. Exs. B,
C.) For the next several years, the defendant operated websites at these
addresses providing computer-related information and services. In July 1995, the
plaintiffs sent the defendant a letter expressing "great concern"
about use of the word Nissan in the defendant's domain name. (Nissan Decl. re:
Prelim. Inj. ¶ 15 & Ex. 44.)
In August 1999, the defendant altered the content of its "nissan.com"
website. (Davis Decl. Ex. E.) The website was captioned "nissan.com,"
and displayed a "Nissan Computer" logo that is allegedly confusingly
similar to the plaintiffs' "Nissan" logo. (Id. Exs. E, G.) In
addition, the website displayed banner advertisements and web links to various
Internet search engines and merchandising companies. (Id. Ex. E.) These
advertisements included links to automobile merchandisers, such as "cartrackers.com"
and "1StopAuto.com;" links to auto-related portions of search engines;
and links to topics such as "Car Quotes," "Auto Racing," and
"Off Road." (Id. Ex. E; Schindler Decl. re: Prelim. Inj. Ex.
In October 1999, the parties met to discuss the possible transfer of the
nissan.com domain name. (Nissan Decl. re: Mot. Dism. ¶¶ 9-10; Davis Decl. ¶¶
11-12.) In the course of these discussions, Mr. Nissan admittedly stated that he
would not sell the domain name except for several million dollars, and made a
proposal involving monthly payments in perpetuity. (Davis Decl. ¶ 11; Def.'s
Opp'n re: Prelim. Inj. at 9-10.) Negotiations were unsuccessful.
On December 10, 1999, the plaintiffs filed a complaint in this Court alleging:
(1) trademark dilution in violation of federal and state law; (2) trademark
infringement; (3) domain name piracy; (4) false designation of origin; and (5)
state law unfair competition. Also on December 10, the Court denied the
plaintiffs' request for a temporary restraining order and scheduled the matter
for a preliminary injunction hearing. The Court also approved limited expedited
The plaintiffs' motion for a preliminary injunction came before the Court for
oral argument on February 7, 2000. The plaintiffs seek an order, inter alia,
enjoining the defendant from displaying advertisements and links on its websites
and requiring the defendant to display a disclaimer and link to the plaintiffs'
website. Alternatively, the plaintiffs seek an order restraining the defendant
from using the nissan.com and nissan.net websites pending resolution of this
The defendant now moves to dismiss for lack of personal jurisdiction or, in the
alternative, for improper venue. The Court deferred ruling on the preliminary
injunction pending settlement discussions and briefing on the defendant's motion.
II. Defendant's Motion to Dismiss for Lack of Personal Jurisdiction
A. Legal Standard
A federal court's exercise of personal jurisdiction must comport both with the
long-arm statute of the state in which it sits and with the constitutional
requirement of due process. California's long-arm statute is coextensive with
due process requirements. See Cal. Civ. Proc. Code § 410.10; Data
Disc, Inc. v. Systems Tech. Assocs., Inc., 557 F.2d 1280, 1286 (9th Cir.
1977). Due process requires that the nonresident defendant have "certain
minimum contacts with [the forum] such that the maintenance of the suit does not
offend 'traditional notions of fair play and substantial justice.'" International
Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (internal citation omitted).
As discussed further below, a federal court may exercise either general or
specific personal jurisdiction. The plaintiff bears the burden of establishing
the necessary jurisdictional facts. See Flynt Distrib. Co., Inc. v.
Harvey, 734 F.2d 1389, 1392 (9th Cir. 1984). To survive a motion to dismiss
for lack of personal jurisdiction, however, the plaintiff need only make a prima
facie showing of jurisdiction. See Ziegler v. Indian River County,
64 F.3d 470, 473 (9th Cir. 1995). In determining whether the plaintiff has met
this burden, the Court must take the allegations in the plaintiff's complaint as
true and resolve disputed jurisdictional facts in the plaintiff's favor. See
AT&T Co. v. Compagnie Bruxelles Lambert, 94 F.3d 586, 588-89 (9th Cir.
B. General Personal Jurisdiction
General personal jurisdiction may be exercised as to any cause of action, if the
defendant is domiciled in the forum state or if its activities there are
"substantial" or "continuous and systematic." Helicopteros
Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984).
In this case, the plaintiffs do not argue that the Court has general personal
jurisdiction over the defendant. (Opp'n at 12 n.5.) Moreover, there is no
evidence that the defendant has "substantial" or "continuous and
systematic" contacts with California. The defendant has offices and
employees only in North Carolina, offers only local Internet access, and
apparently limits its sales and advertising to the East Coast. (Nissan Decl. re:
Mot. Dism. ¶¶ 4-5.) Accordingly, the Court finds that the plaintiffs have not
established a basis for general personal jurisdiction over the defendant.
C. Specific Personal Jurisdiction
Specific personal jurisdiction may be exercised when the "nature and
quality" of the defendant's contacts with the forum state are significant
in relation to the specific cause of action. Data Disc, 557 F.2d at 1287.
Specific jurisdiction requires a showing that: (1) the nonresident defendant
purposefully directed its activities toward the forum state; (2) the plaintiff's
claim arises out of or results from the defendant's forum-related activities;
and (3) the forum's exercise of personal jurisdiction is reasonable. See Burger
King Corp. v. Rudzewicz, 471 U.S. 462, 477-78 (1985); Lake v. Lake,
817 F.2d 1416, 1421 (9th Cir. 1987).
To establish purposeful availment, the plaintiffs must show that the defendant
has deliberately engaged in "significant activities" within a state
or has created "continuing obligations" between himself and the
forum. See Gray & Co. v. Firstenberg Mach. Co., 913 F.2d
758, 760 (9th Cir. 1990) (quoting Burger King, 471 U.S. at 475-76). In
the Internet context, alleged trademark infringement in connection with the
domain name of a passive website does not itself subject the defendant to
personal jurisdiction in the plaintiff's forum state. See Cybersell,
Inc. v. Cybersell, Inc., 130 F.3d 414, 419 (9th Cir. 1997). Rather, there
must be "'something more' to indicate that the defendant purposefully (albeit
electronically) directed his activity in a substantial way to the forum state."
See id. at 418.
The plaintiffs contend that the defendant's transaction of business in
California establishes purposeful availment. The general rule is that merely
contracting with a resident of the forum state is insufficient to confer
specific jurisdiction over a nonresident defendant. See Burger
King, 471 U.S. at 479; Ziegler, 64 F.3d at 473. However,
solicitation of business in the forum state may constitute purposeful
availment "if that solicitation results in contract negotiations or the
transaction of business." Shute v. Carnival Cruise Lines, 897
F.2d 377, 381 (9th Cir. 1990), rev'd on other grounds, 499 U.S. 585
The plaintiffs submit evidence that the defendant contracted with five
companies based in California: Asimba, Inc.; Ask Jeeves, Inc.; CNET, Inc.;
GoTo.com, Inc.; and RemarQ Communities, Inc. (Schindler Decl. re: Mot. Dism.
Exs. 1-5.) The defendant displayed advertising banners and links from these
companies on the nissan.com website, and received a commission each time a
visitor clicked through to an advertiser's website. According to the
plaintiffs, more than 90,000 customers clicked through from the nissan.com
website to the websites of the California advertisers between August and
December 1999. (Id. ¶ 19.) In addition, the plaintiffs submit
evidence that the defendant directly solicited auto-related advertising
business from another California-based company, Autoweb.com, although this
solicitation did not result in the transaction of business. (Id. Exs.
The defendant responds that it arranged the advertising on its website
through a Massachusetts-based intermediary, Be Free, and that it never
knowingly reached out to California companies. The Court rejects this
argument. The plaintiffs submit evidence that the defendant contracted
directly with the five California-based advertisers. Specifically, by
enrolling with advertisers on Be Free's website, the defendant agreed to be
bound by contracts with those advertisers. (Schindler Decl. re: Mot. Dism.
Exs. 6-12; Greenstein Decl. in Reply to Mot. Dism., Ex. 85 at 21.) In each
case, the defendant also received e-mail acceptance notices directly from
the California advertisers. (Id. Exs. 18-24.) Finally, the plaintiffs
submit evidence that each of the defendant's contracts with the California
advertisers provided that the contract would be governed by California law.
(Id. Exs. 8-12.) This factor alone is sufficient to establish
purposeful availment. See Decker Coal Co. v. Commonwealth Edison
Co., 805 F.2d 834, 840 (9th Cir. 1986).
The Court finds that the defendant purposefully directed its activity in a
substantial way toward California. Accordingly, the plaintiffs have met
their burden to show purposeful availment.
b. Effects Doctrine
The plaintiffs also argue that personal jurisdiction is proper under the
"effects doctrine." Under that doctrine, personal jurisdiction may
also be based on "(1) intentional actions (2) expressly aimed at the
forum state (3) causing harm, the brunt of which is suffered __ and which
the defendant knows is likely to be suffered __ in the forum state." Core-Vent
Corp. v. Nobel Indus. AB, 11 F.3d 1482, 1486 (9th Cir. 1993) (interpreting
Calder v. Jones, 465 U.S. 783 (1984)). In the Internet context, the
Ninth Circuit has found personal jurisdiction where the defendant
deliberately registered the domain name for the purposes of extortion and
with the effect of injuring the plaintiff in the forum state. See Panavision
Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1322 (9th Cir. 1998).
Here, as in Panavision, the defendant's alleged activities satisfy
the effects test. The defendant is not alleged to have deliberately
registered domain names for purposes of extortion. However, the evidence
supports a finding that the defendant intentionally changed the content of
its website in August 1999 to exploit the plaintiffs' goodwill by profiting
from consumer confusion. The brunt of the harm was suffered in the forum
state because Nissan North America, Inc., the exclusive licensee of the
Nissan trademarks, is based in Gardena, California. (Compl. ¶ 2; Opp'n at 8
The defendant argues that it is not subject to personal jurisdiction because
it merely operated a passive website. The defendant further argues that,
under the Court's analysis, a passive Internet infringer could be sued
anywhere in the country. The Court rejects this characterization of the
defendant's activity. Although the defendant did not directly sell goods to
consumers on its websites, it derived advertising revenue by intentionally
exploiting consumer confusion. This intentional exploitation of consumer
confusion supplies the "something more" indicating that the
defendant deliberately and substantially directed its activity toward the
Citing Core-Vent Corp., 11 F.3d at 1487, the defendant also argues
that a corporation does not suffer harm in a particular location. However,
the Ninth Circuit held in Panavision that a corporation may suffer
harm in its principal place of business. See Panavision, 141
F.3d at 1322 n.2. The defendant also argues that a trademark licensee cannot
bring an infringement suit. However, this argument does not address whether
the plaintiffs suffered harm in California. The Ninth Circuit has approved a
finding of personal jurisdiction in a trademark infringement suit, where the
plaintiff used the trademark in the forum state. See id. at
1322 (approving analysis in Indianapolis Colts, Inc. v. Metropolitan
Baltimore Football Club Ltd. Partnership, 34 F.3d 410 (7th Cir. 1994)).
The Court finds that the defendant's alleged conduct satisfies the effects
test. Accordingly, personal jurisdiction is also proper on that ground.
The plaintiffs must also establish that their claims arise out of or result
from the defendant's forum-related activities. This element is established if
the plaintiffs would not have been injured "but for" the defendant's
activities. See Panavision, 141 F.3d at 1322; Ballard v.
Savage, 65 F.3d 1495, 1500 (9th Cir. 1995). Activities that are "too
attenuated" do not satisfy the but-for test. Doe v. American Nat'l Red
Cross, 112 F.3d 1048, 1051 (9th Cir. 1997).
Here, the plaintiffs' trademark infringement and dilution claims arise out of
the defendant's California-related activities. The defendant's contracts with
California-based advertisers allegedly resulted in the diversion of the
plaintiffs' potential customers to other websites and the exploitation of the
plaintiffs' goodwill. In addition, under the effects test, the defendant's
intentional exploitation of the plaintiffs' goodwill and diversion of the
plaintiffs' potential customers had the effect of injuring Nissan North
America in California. But for the defendant's conduct, this injury would not
have occurred. See Panavision, 141 F.3d at 1322. Accordingly,
the Court finds that this prong is satisfied.
An otherwise valid exercise of personal jurisdiction is presumed to be
reasonable. See Ballard, 65 F.3d at 1500. Accordingly, once a
court finds purposeful availment, it is the defendant's burden to "present
a compelling case" that the exercise of jurisdiction would be
unreasonable. Id. (citing Burger King, 471 U.S. at 477). This
determination requires the balancing of seven factors: (1) the extent of
purposeful interjection; (2) the burden on the defendant of defending in the
forum; (3) the extent of conflict with the sovereignty of the defendant's
state; (4) the forum state's interest in the dispute; (5) the most efficient
forum for judicial resolution of the dispute; (6) the importance of the forum
to the plaintiff's interest in convenient and effective relief; and (7) the
existence of an alternative forum. See Gray & Co., 913 F.2d
The defendant has not carried its burden to show unreasonableness. The first
factor, purposeful interjection, is analogous to that of purposeful availment.
See Sinatra v. National Enquirer, Inc., 854 F.2d 1191, 1199 (9th
Cir. 1988). As discussed above, the defendant's activities in California
satisfy this requirement. The other factors do not weigh strongly in favor of
either side. Although other forums are available, advances in communication
and transportation have reduced the burden of cross-country litigation. See
id. Moreover, the defendant's burden of litigating in this forum must
be weighed against the plaintiffs' convenience. Neither forum provides any
marked efficiency over the other. Any conflicting sovereignty interests are
accommodated through choice-of-law rules. See Gray & Co.,
913 F.2d at 761. Finally, California has a strong interest in protecting its
citizens from trademark infringement and consumer confusion.
Upon balancing these factors, the Court finds that an exercise of personal
jurisdiction over the defendant would be reasonable.
The Court finds that the plaintiffs have made a prima facie showing of specific
personal jurisdiction over the defendant. Accordingly, the Court denies the
defendant's motion to dismiss.
Defendant's Motion to Dismiss for Lack of Venue
A. Legal Standard
In a federal question case, venue is proper in a judicial district in which: (1)
any defendant resides, (2) "a substantial part of the events or omissions
giving rise to the claim occurred, or a substantial part of property that is the
subject of the action is situated;" or (3) the defendants are subject to
personal jurisdiction, if there is no other district in which the action could
be brought. 28 U.S.C. § 1391(b). If a state has more than one judicial district,
a defendant corporation is deemed to reside in any district "within which
its contacts would be sufficient to subject it to personal jurisdiction if that
district were a separate State." 28 U.S.C. § 1391(c).
If venue is improper, the court must either dismiss or, in the interests of
justice, transfer the case to a district having proper venue. See 28
U.S.C. § 1406(a). Although there is some disagreement, most courts hold that
the plaintiff bears the burden of establishing proper venue. See
Schwarzer et al., supra, ¶ 4:251 at 4-66 (arguing that placing the
burden on plaintiff is the better view). A prima facie showing of proper venue
is sufficient to defeat a motion to dismiss. See id., ¶ 9:139.1
The defendant argues that venue is improper because it has insufficient contacts
with the Central District. Of the five California-based companies that
advertised on the defendant's website, only one -- GoTo.com -- is allegedly
based in this district. It is not clear whether the defendant's transaction of
business with GoTo.com is itself sufficient to support specific personal
jurisdiction. However, the principal place of business of plaintiff Nissan North
America, Inc., is Gardena, California. (Compl. ¶ 2.) Thus, although the parties
do not raise the issue, personal jurisdiction in this district would be proper
under the effects doctrine. Accordingly, the Court denies the defendant's motion
to dismiss for improper venue.
IV. Plaintiffs' Motion for Preliminary Injunction
A. Legal Standard
To obtain a preliminary injunction, the moving party must show either: (1) a
combination of probable success on the merits and the possibility of irreparable
injury without the injunction; or (2) that serious questions are raised and the
balance of hardships tips sharply in favor of the moving party. See Dr.
Seuss Enters. v. Penguin Books USA, Inc., 109 F.3d 1394, 1397 n.1 (9th Cir.
1997). A serious question is one to which the moving party has a "fair
chance of success on the merits." Sierra On-Line, Inc. v. Phoenix
Software, Inc., 739 F.2d 1415, 1421 (9th Cir. 1984). These standards
"'are not separate tests but the outer reaches of a single continuum.'"
International Jensen, Inc. v. Metrosound U.S.A., 4 F.3d 819, 822 (9th Cir.
1993) (citation omitted).
B. Likelihood of Success on the Merits
The plaintiffs argue that they are likely to succeed on the merits on all of
their claims. However, the Court need only address the plaintiffs' claim of
trademark infringement in violation of Section 32(a) of the Lanham Act, 15 U.S.C.
§ 1114(1). To prevail on this claim, the plaintiffs must show that: (1) the
plaintiffs have a valid, protectable trademark interest in their
"Nissan" mark; and (2) the defendant is using a confusingly similar
mark. See Brookfield Communications, Inc. v. West Coast Entertainment
Corp., 174 F.3d 1036, 1046 (9th Cir. 1999).
of Plaintiffs' Mark
The Nissan mark was first registered by plaintiff Nissan Motor Co. in 1959,
and has been used continuously since. (Rinek Decl. ¶ 4.) The mark has become
incontestable, and therefore immune from attack on certain grounds. See
15 U.S.C. §§ 1115(b), 1065; Park 'N Fly, Inc. v. Dollar Park & Fly,
Inc., 469 U.S. 189, 205 (1985). Accordingly, the Court finds that the
plaintiffs have a valid, protectable trademark interest in the
The defendant argues that Mr. Nissan has been using his surname in connection
with various businesses since the 1980s. Although there is no absolute right
to use one's name as a trademark, the Ninth Circuit has recognized a "judicial
reluctance to enjoin use of a personal name." E. & J. Gallo Winery
v. Gallo Cattle Co., 967 F.2d 1280, 1288 (9th Cir. 1992). However, use of
an infringing name may still be limited by a carefully tailored injunction. See
Incontestable status also does not preclude the defendant from disputing the
strength of the mark. See McCarthy on Trademarks § 32:155 at
32-221 (1999). This issue is addressed further below, in the discussion of
likelihood of confusion.
2. Likelihood of Confusion
The central issue in a trademark infringement suit is the likelihood of
consumer confusion. See, e.g., Dr. Seuss Enters., 109 F.3d at
1403-04. In the Ninth Circuit, a court determines the likelihood of consumer
confusion by considering the following set of factors: (1) the strength of the
plaintiff's mark; (2) the relatedness or proximity of the parties' goods or
services; (3) the similarity of the parties' marks; (4) evidence of actual
confusion; (5) the marketing channels used; (6) the degree of care likely to
be exercised by the purchaser; (7) the defendant's intent in selecting the
mark; and (8) the likelihood of expansion of the product lines. See Brookfield,
174 F.3d at 1054 (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,
348-49 (9th Cir. 1979)). This set of factors is not exhaustive, and should not
be applied rigidly in the Internet context. See id.
One type of actionable consumer confusion is known as "initial interest"
confusion. See Interstellar Starship Servs. Ltd. v. Epix Inc.,
184 F.3d 1107, 1110 (9th Cir. 1999); Brookfield, 174 F.3d at 1062. The
Ninth Circuit has explicitly recognized that an infringement claim may be
based on "the use of another's trademark in a manner calculated to
capture initial consumer attention," even if the confusion does not
result in a sale. See Brookfield, 174 F.3d at 1062 (internal citations
In Brookfield, the Ninth Circuit applied this doctrine to enjoin the
confusing use of Internet metatags1. See id. at
1062-63. The court found that, by using a trademark in such a way as to divert
consumers to its website, an infringer "improperly benefits from the
goodwill that [the plaintiff] developed in its mark." Id. at 1062.
To prevail on such a theory, the plaintiff need not demonstrate that the
consumer was confused as to the source of the products or even that the
consumer ultimately made a purchase. See id. at 1062-63.
of Plaintiffs' Mark
The parties dispute the strength of the plaintiffs' mark. The defendant
argues that the Nissan mark is inherently weak because it is a surname and a
word in Hebrew and Arabic. Personal names used as trademarks are generally
not inherently distinctive, but may be treated as strong marks upon a
showing of secondary meaning. See E. & J. Gallo Winery,
967 F.2d at 1291.
Here, the plaintiffs submit evidence that the Nissan mark has been in
continuous use in the automobile industry since 1959. (Rinek Decl. ¶ 6.)
The plaintiffs have also extensively promoted the mark, spending about $400
million on advertising and promotions in the United States in 1999. (Id.
¶ 6.) The plaintiffs also submit evidence of strong consumer recognition of
the mark. A 1988 newspaper article listed Nissan as one of the top 200
consumer-identified brands in the United States. (Lawrence Decl. Ex. F.)
Moreover, a recent survey shows that 92% of consumers would expect to find a
car company at the nissan.com and nissan.net websites. (Schindler Decl. re:
Prelim. Inj. Ex. C.) Based on this evidence, the Court finds that the Nissan
mark has secondary meaning and should be treated as a strong mark.
The defendant argues that the Nissan mark is diluted due to brand
fragmentation, extensive third-party usage, and poor trademark enforcement.
(See, e.g., Vantress Decl. Exs. 54-55.) Even if relevant to the
strength of the mark, these factors are not dispositive. See, e.g., Eclipse
Assocs. Ltd v. Data General Corp., 894 F.2d 1114, 1119 (9th Cir. 1990) (finding
that evidence of other unrelated infringers is irrelevant to trademark
infringement claim). Given the substantial evidence of secondary meaning,
the Court finds that the strength of the Nissan mark weighs in the
b. Similarity of Marks
The marks at issue in this case are the plaintiffs' "Nissan"
mark and the defendant's "nissan.com" and "nissan.net"
Internet domain names. The only differences between these marks are the
domain name suffixes, which merely signify the domain level. The marks are
thus, "for all intents and purposes, identical in terms of sight, sound,
and meaning." Brookfield, 174 F.3d at 1055. Accordingly, this
factor weighs in the plaintiffs' favor.
c. Proximity of Goods
The use of similar marks to promote similar products weighs heavily in
favor of finding a likelihood of confusion. See id. at 1056.
If the public would associate the defendant's products with the plaintiffs,
it is not dispositive that the parties' principal lines of business are
different. See id.
The defendant argues that the parties' principal lines of business are
different. The defendant contends that it principally sells computers and
Internet services, while the plaintiffs principally sell cars and other
vehicles. However, this case is not suited to a traditional
proximity-of-goods analysis. Starting in August 1999, the defendant's
nissan.com website primarily promoted automobile-related products and
services, through third-party advertisements and web links, rather than the
defendant's own computer products. More than 90% of the defendant's website
advertising revenue is automobile-related. (Schindler Decl. re: Prelim. Inj.
Ex. G.) Whether or not a visitor to the defendant's website ultimately makes
an automobile purchase from an advertiser, the defendant profits from the
visitor's initial interest confusion. By posting automobile-related links
and advertisements, the defendant derives advertising revenue due to the
diversion of a consumer's initial interest in Nissan vehicles. As in Brookfield,
the defendant is improperly appropriating the plaintiffs' goodwill. Thus, in
regards to its Internet-related activity, the defendant's "product"
is the exploitation of customer confusion. Accordingly, this factor weighs
in favor of the plaintiffs.
d. Overlapping Marketing Channels
Both parties also use the Internet as a marketing and advertising channel.
This factor further exacerbates the likelihood of confusion, and therefore
weighs in the plaintiffs' favor. See Brookfield, 174 F.3d at
e. Actual Confusion
Another important factor in this case is actual consumer confusion. The
plaintiffs submit evidence that consumers send e-mail inquiries about Nissan
vehicles to the defendant at "firstname.lastname@example.org," and frequently
search for information on Nissan vehicles at the nissan.com website.
(Schindler Decl. re: Prelim. Inj. Exs. H, I.)
The plaintiffs also submit strong evidence of initial interest confusion.
Survey evidence shows that 92% of consumers would expect to find information
on cars at the nissan.com and nissan.net websites. (Id. Ex. C.) The
plaintiffs also submit evidence that the majority of visitors arrive at
nissan.com by directly typing in the domain name or by launching from
another car-related website. (Id. Ex. K.) Accordingly, this factor
weighs heavily in the plaintiffs' favor.
f. Other Factors
The factors discussed above all weigh in favor of finding a likelihood of
confusion. On balance, the remaining Sleekcraft factors do not alter
this conclusion. As to the intent factor, there is no evidence that the
defendant registered the "nissan.com" and "nissan.net"
domain names with the intent to confuse consumers. However, an intent to
confuse may be inferred from the defendant's alteration of its nissan.com
website in August 1999 to display automobile-related information and a
confusingly similar logo. Finally, the remaining two factors, degree of care
exercised by the consumer and the likelihood of expansion of product lines,
are not important in the context of this case.
The Court finds that the plaintiffs have demonstrated both a valid mark and
a likelihood of confusion. Accordingly, the Court finds that the plaintiffs
have demonstrated a likelihood of success on the merits of their trademark
As the plaintiffs have demonstrated a likelihood of success on their trademark
infringement claim, irreparable injury is presumed. See Schwarzer et
al., supra, ¶ 13:44 at 13-14 (1999). Here, irreparable injury is also
apparent because the defendant is trading on the plaintiffs' goodwill and
diverting potential Nissan car customers to other websites.
The defendant argues that the presumption of irreparable harm is rebutted by
the plaintiffs' delay in seeking injunctive relief. The Court rejects this
argument. The defendant notes that Mr. Nissan has used his surname in business
since the 1980s. The defendant also notes that it began using the nissan.com
website in 1994, and received a letter from the plaintiffs regarding the
website in July 1995. However, the plaintiffs respond that the nissan.com
website was altered in August 1999 to maximize and exploit consumer confusion.
The plaintiffs argue that they opened settlement discussions soon after
discovering these changes in October 1999.
The Court finds that the plaintiffs sought timely relief. Accordingly, the
defendant has failed to rebut the presumption of irreparable harm.
D. Terms of the Injunction
The remaining issue is the scope of the injunction. An injunction limiting the
use of an infringing personal name should be "carefully tailored to
balance the interest in using one's name against the interest in avoiding
public confusion." E. & J. Gallo Winery, 967 F.2d at 1288.
The plaintiffs seek an order requiring the defendant to: (1) refrain from
offering advertisements, promotions or Internet links on the nissan.com and
nissan.net websites; (2) cease providing Internet service on these websites;
(3) post a disclaimer informing visitors that these websites are not
affiliated with the plaintiffs; (4) include a link to the plaintiffs' website;
and (5) cease using the metatag "Nissan" in connection with the
websites. Alternatively, the plaintiffs request an order requiring the
defendant to transfer the nissan.com and nissan.net websites to the plaintiffs.
The defendant does not directly address the terms of the requested injunction.
The Court finds that the likelihood of confusion may be mitigated by less
restrictive measures than proposed by the plaintiffs. To reduce confusion, the
defendant's websites must prominently display, in the upper portion of the
first page of the websites: (1) a caption or statement identifying the
websites as affiliated with Nissan Computer Corporation; and (2) a statement
disclaiming affiliation with the plaintiffs and identifying the location of
Nissan North America's website. The disclaimer should state something
substantially similar to the following: "This website is not affiliated
with the Japanese automaker, Nissan Motor Co., or with its North American
subsidiary, Nissan North America, Inc. Nissan North America's website is
located at www.nissan-usa.com." In addition, the defendant must not
display any automobile-related information, advertising, or web links,
including links to automobile-related portions of Internet search engines.
The Court finds that the above measures will adequately address consumer
confusion. Accordingly, a link to the plaintiffs' website is not required. The
defendant may also display non-automobile-related third-party advertisements
and links on its websites. Finally, the defendant may continue to conduct and
advertise its own computer business, including the provision of Internet
services, and may continue to use the word "Nissan" as a metatag.
The Court denies the defendant's motion to dismiss for lack of personal
jurisdiction and improper venue, and grants the plaintiffs' motion for a
IT IS HEREBY ORDERED that the defendant shall immediately, and for the
pendency of this action:
post a prominent caption, in the upper portion of the first web page of the
nissan.com and nissan.net websites, identifying these websites as affiliated
with Nissan Computer Corporation;
(2) post a prominent disclaimer, in the upper portion of the first web page of
the nissan.com and nissan.net websites, informing visitors that the nissan.com
and nissan.net websites are not affiliated with the plaintiffs and identifying
the location of Nissan North America's website; and
(3) refrain from displaying automobile-related information, advertisements,
promotions, or Internet links on the nissan.com and nissan.net websites,
except as set forth above.
FURTHER ORDERED that this Order is granted on the condition that the plaintiffs
file a bond in the sum of $100,000 within five business days of the entry of
this Order to make good such damages, not to exceed said sum, as may be suffered
or sustained by defendant if it is subsequently found to be wrongfully
IT IS SO ORDERED.
1Metatags are a form of HTML code,
used by Internet search engines to match websites to the search terms entered by
the web user. See Brookfield, 174 F.3d at 1061 n.23.
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