Stalemate in the name game

After years of struggle, a small computer firm and a corporate giant wait for a court to decide which is entitled to the Web site nissan.com.

By DAVE SCHEIBER, Times Staff Writer
© St. Petersburg Times
published May 5, 2002

Click on www.nissan.com, and you'd expect to see Altimas, Quests and Xterras popping into view on the home page of Nissan Motors.

But instead, you find the domain of a small computer company -- and the story of a bitter, drawn-out legal battle over cyberidentity.

The conflict pits the Japanese automaker against a man from North Carolina by way of Jerusalem, fighting over a critical asset they have in common.

Their name.

In 1994, Uzi Nissan, an Israeli immigrant, anticipated the impending growth of the Internet. For $150, he registered nissan.com to advertise his three-year-old computer sales and repair company, Nissan Computer Corp. He was proud of his surname, which also happens to be the word for the seventh month in the Hebrew calendar. "Nissan is the month of Passover," he explains.

Today, however, Uzi Nissan says he is financially ruined and emotionally drained from fending off a $10-million lawsuit from Nissan Motors, which insists it should have the rights to nissan.com.

For the car manufacturer, currently using nissandriven.com, the stakes are greater visibility on the Web as it seeks every possible edge in a highly competitive industry.

For Uzi Nissan, 51, the dispute amounts to no less than business survival or bankruptcy, and what he regards as a basic right: to use his family name to support his livelihood.

"Nissan Motor's Lawsuit Against Us: It Can Happen to You or Someone You know," proclaims a flashing link on his home page. On May 14 -- eight years to the day after he registered nissan.com -- the showdown heads into a California court, where a jury will determine the outcome.

Cybersquatting cases are nothing new. In the late '90s, as the Internet's popularity surged, so did the number of instances of people reserving the name of a company or individual -- then hoping to sell the domain name rights to those parties for big bucks. A national law in 1999 made the practice illegal.

Yet in Nissan vs. Nissan, does the cybersquatting rule apply?

Last month, a California judge said no, handing Uzi Nissan a key preliminary victory. But it was not the end of the conflict. The judge found that the computer entrepreneur had infringed on Nissan Motors' rights by including links to four auto-related businesses among several dozen advertisers on his site.

The judge also tossed out an array of countersuits filed by Uzi Nissan and said that a jury would have to decide if he had "diluted" Nissan Motors' trademark. The verdict, expected this month, could set a legal precedent in similar cases.

Last month, a Nissan Motors attorney took issue with the judge's decision to toss out the cybersquatting charge, insisting that Uzi Nissan had without question "traded off" Nissan Motors' name and stature. "It's a modern-day story of David and Goliath," Uzi Nissan says. "The only reason they want nissan.com is because it makes them look like the big guys on the Internet. I'm supposed to be happy to be the little guy and change to nissancomputers.com. But why shouldn't I be able to use my name if I registered it first?"

Uzi Nissan arrived in the States in 1976 to sell security equipment for a company overseas. Back then, and well into the 1980s, Nissan cars were known in America by another name: Datsun.

When his company shifted its focus to Europe, Nissan decided he'd rather stay in North Carolina, where his brother worked as a car mechanic.

By 1980, he had opened Nissan Foreign Car Mobile Repair Service in the Raleigh, N.C., area, driving his van to people's houses to fix cars. His license plate: NISSAN. Business flourished by the mid '80s, and Nissan opened an import-export business dealing mostly in heavy construction equipment. He also began importing computers and learning all he could about sales and repair.

Then, in 1991, Nissan started his computer business. But in 1995 -- a year after paying for the names nissan.com and digest.com (to start a computer magazine) -- he encountered the first sign of trouble. It was a letter from the senior counsel of Nissan Motors.

"They just wanted to know how am I going to use the name nissan.com," he says. "I didn't even reply, because they're a car company and I'm a computer company."

One year later, expanding his business as an Internet service provider, Uzi Nissan applied for an additional domain name: nissan.net. To his surprise, it was still available.

"Even though (Nissan Motors) had written me a letter in '95, a whole year went by and they didn't bother registering nissan.net." he says. "So I took it for my service provider end of the business."

Life was good for Uzi Nissan. In July 1999, his wife gave birth to their first child, a daughter named Ariel. And he was negotiating a $1.2-million deal with a European investor to help expand the business. But three months later, all that changed. A Nissan Motors executive called from Los Angeles. "He said he would like to talk to me about the possibility of purchasing my name," says Uzi Nissan.

Nissan said his name wasn't for sale, but he would discuss other options, such as including links and banners for Nissan Motors on his site. Two days later, the executive flew to North Carolina to talk about it over dinner. "We discussed many things, such as maybe doing a split page, if they wanted to pay a monthly fee," he says. The executive said he would relay the ideas to his bosses, says Nissan, and then jetted home.

Two months passed without a word. But in early December, the executive called back. He needed to meet with Nissan right away and was flying back to North Carolina.

"I remember, he flew on the 10th, which was a Friday, and when he came in, his face was completely changed," Nissan says. "He said, 'My superiors don't want any partnership, they want nissan.com AND nissan.net. And they want a price.' "

Nissan says he again insisted his name was not for sale, but the executive badgered him: "Give me a price, I need a price."

"So finally, I say, 'You know what? $15-million! Now do you understand that I don't want to sell?' " recalls Nissan.

The man excused himself to make a phone call. While he was out, Nissan says, he received a call -- from attorneys representing Nissan Motors, informing him that he was being sued for $10-million over trademark infringement.

When the executive returned to the room, Nissan was stunned. "He said, 'Uzi, I apologize, I did not know anything about that, it was not supposed to end up that way,' " Nissan says.

Two weeks later, however, the executive gave his deposition in the case. "We realized that he had already signed his declaration for the complaint two days before he came to see me," Nissan says. "He just came to entrap me so I would give him a price."

Nissan Motors had the weight of the new anti-cybersquatting law, which had gone into effect 11 days earlier. By eliciting a price from him, Uzi Nissan says, the carmaker could bolster its cybersquatting case.

Nissan auto officials see things very differently. Contacted at their California headquarters, they released this statement: "We filed a lawsuit to protect our name, our image, our reputation with the global Internet community and auto consumers. Every day thousands of people are logging onto nissan.com and nissan.net sites in the mistaken belief that they are reaching Nissan (the automaker). We think that NCC -- Uzi's company -- is improperly exploiting this confusion for its own benefit and is creating ill will among our actual and potential customers.

"Uzi, or NCC, has gone as far as to demand a multi-million-dollar payment from Nissan even though he knows customers are visiting nissan.com and nissan.net not looking for NCC. They are looking for Nissan the automaker."

Though he is happy about the court ruling in his favor in April, Uzi Nissan says the case still keeps him up at night:

"I'm all mortgaged out. I owe money to every member of my family. I don't have health insurance."

He has been forced to let his staff go at a time when he and his wife have had their second child, a boy named Dvir, born two months ago. "Sometimes, I'm here until 1 a.m., just trying to keep things going," he says.

"All I want is to get my business back on its feet. And I should be able to use my name to do it."

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