## Facts

- Nissan Motor Co., Ltd. and its U.S. subsidiary owned long-standing U.S. trademark rights in “NISSAN,” used prominently for automobiles and widely recognized by the early 1990s.
- Uzi Nissan used “Nissan” (his surname) in various businesses beginning in 1980 and operated Nissan Computer Corp. beginning in 1991.
- Nissan Computer registered the domain name **nissan.com** in 1994 (later **nissan.net**) and used the sites primarily for computer-related goods and services.
- In 1999, Nissan Computer’s sites carried advertising content that included, for a period, automobile-related products and services.
- Nissan Motor sued under federal and state trademark infringement and dilution theories and sought injunctive relief and transfer of the domain names.
- The district court found infringement based on initial interest confusion as to automobile-related advertising, found dilution, rejected laches, and entered a broad injunction barring commercial content on the sites and barring links to sites containing “disparaging” or “negative” commentary about Nissan Motor.
- Both sides appealed.

## Issues

1. Whether Nissan Computer’s automobile-related use of “nissan.com” created actionable trademark infringement under an initial interest confusion theory.
2. For federal dilution, what constituted Nissan Computer’s “first commercial use,” and whether Nissan Motor’s mark was famous before that date.
3. Whether laches barred Nissan Motor’s dilution claims.
4. Whether the injunction was overbroad, including whether restrictions on linking to critical commentary violated First Amendment limits on trademark remedies.
5. Whether transfer of **nissan.com** and **nissan.net** was an appropriate remedy.

## Decision

- The court **affirmed** infringement liability as to **automobile-related** use of “nissan.com” based on **initial interest confusion**.
- The court **affirmed** rejection of **laches** as a bar to dilution claims.
- The court **reversed and remanded** parts of the **dilution** rulings, requiring reconsideration of **first commercial use** and **fame timing** under the FTDA.
- The court **vacated and narrowed** the injunction as **overbroad**, including striking limits on links to “disparaging” or “negative” commentary and limiting restrictions to conduct tied to infringement/dilution.
- The court **declined** to order **transfer** of the domain names.

## Legal Principles

- **Initial interest confusion** can support infringement where a defendant’s use of a mark (including in a domain name) captures consumer attention by trading on the trademark owner’s goodwill, even if confusion is dispelled before a purchase.
- Under the **FTDA (pre-2006 framework)**, a plaintiff must show the mark was **famous before** the defendant’s **first commercial use**; determining “first commercial use” may require examining commercial uses beyond mere domain registration.
- **Laches** in trademark/dilution disputes depends on unreasonable delay and prejudice; changed or newly problematic uses can defeat a laches defense despite earlier noninfringing use.
- Trademark injunctions must be **narrowly tailored** to unlawful commercial conduct; remedies that restrict noncommercial expression or impose content- or viewpoint-based limits on criticism exceed permissible bounds.
- Domain-name disputes do not automatically justify **transfer** where the defendant has a legitimate basis to use the name (including use of a surname), and narrower relief can address confusion or dilution.

## Conclusion

The Ninth Circuit held that automobile-related advertising on “nissan.com” infringed Nissan’s mark under initial interest confusion, but it narrowed sweeping injunctive restrictions that reached protected online commentary and remanded dilution issues for proper analysis of first commercial use and fame timing, while refusing to transfer the domain names.


Nissan Motor Co. v. Nissan Comput. Corp., 378 F.3d 1002 (9th Cir. 2004)