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A U.S. District Court judge for the Central District of California on Dec. 10 denied Nissan Computer Corp. leave to add six state-law counterclaims in its dispute with Nissan Motor Co. over rights to “nissan.com” and “nissan.net.” Nissan Motor Co. v. Nissan Computer Corp., No. CV 99-12980, (C.D. Cal. 1999) The court previously said, however, that Nissan Computer can pursue claims against the auto manufacturer for cancellation of trademark registrations and abandonment of pending trademark applications, and fraud on the U.S. Patent and Trademark Office. The six state-law counterclaims Nissan Computer sought to add alleged generally that Nissan Motor has harmed Nissan Computer by contracting with various search engines to direct any searches for “nissan” to the auto company’s Web site. The disputed domains were registered in 1994 and 1996 respectively by Nissan Computer, and have been in use since. The parties did negotiate briefly, but in 1999 Nissan Motor Co. filed this action, alleging trademark dilution and infringement, domain name piracy, false designation of origin and unfair competition. On March 23, 2000, the court found that Nissan Motor is likely to prevail on its trademark claims and ordered Nissan Computer to post a disclaimer on its sites and refrain from displaying any auto-related content. Nissan Motor Co. v. Nissan Computer Corp., 89 F. Supp. 2d 1154, 1162-64 (C.D. Cal. 2000). That decision was affirmed by the 9th U.S. Circuit Court of Appeals (246 F.3d 675) (9th Cir. 2000). Nissan Computer filed counterclaims in May 2000, alleging (1) reverse domain hijacking, (2) interference with prospective economic advantage, (3) unfair competition, (4) unjust enrichment, (5) accounting, (6) trademark misuse, and (7) fraud on the PTO. The court dismissed the reverse domain hijacking and trademark misuse counterclaims as having no basis in law, and dismissed the second through fifth counterclaims, insofar as they were based on Nissan Motor’s filing of litigation, as barred by litigation privilege. On Aug. 1, the court granted Nissan Computer leave to file the three counterclaims relating to representations made by Nissan Motor when it registered the “Nissan” trademark, but reserved judgment on the state-law claims relating to search engine contracts. In denying leave to amend to add those counterclaims, U.S. District Judge Dean D. Pregerson said the effort would be futile. The court has already ruled that Nissan Motor has a valid trademark interest in “Nissan” and defendant’s registration of related domain names “cannot trump the plaintiffs’ use of the ‘Nissan’ mark on the Internet or anywhere else,” Judge Pregerson ruled. Counsel for Nissan Motor Co.: Mark A. Flagel, Daniel S. Schecter, Michael J. Lawrence and David J. Schindler of Latham & Watkins in Los Angeles. Counsel for Nissan Computer Corp.: Neil D. Greenstein of San Jose, Calif.

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