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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TRN Business Trust and Trinity Industries, Inc. v. Internet Holding Group
Case No. D2002-0646
1. The Parties
Complainants are (1) TRN Business Trust, a Delaware business trust, and (2) Trinity Industries, Inc., a Delaware corporation. Both have a business address in Dallas, Texas, United States of America. They are referred to collectively as "Trinity" in this decision.
Respondent is Internet Holding Group, an entity having an address in New York, New York, United States of America. Respondent is referred to as "Internet Holding" in this decision.
2. Domain Name and Registrar
The domain name in issue is <trinity.com>.
The registrar is Register.com - Domain Registrar, 575 8th Avenue, New York, New York 10018, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the complaint in this proceeding on July 11, 2002, via email, and on July 15, 2002, in hard copy form, together with the required fee.
On July 15, 2002, Register.com sent via email to the Center Register.com’s confirmation that (1) the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is applicable to the domain name, and (2) the domain name is "active".
The Center verified that the complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On July 16, 2002, the Center transmitted to the parties Notification of Complaint and Commencement of Administrative Proceeding, together with copy of complaint. The Center advised the parties that the formal date of the commencement of this administrative proceeding is July 16, 2002, and the last day for sending Internet Holding’s response to Trinity and to the Center is August 5, 2002.
On August 6, 2002, in response to Internet Holding’s request, the Center extended to August 19, 2002, the due date for Internet Holding’s response.
On August 16, 2002, the Center received Internet Holding’s response via email, and on August 20, 2002, in hard copy form.
On August 23, 2002, the Center advised the parties that Mr. David W. Plant had been appointed as Panelist. The Center advised that absent exceptional circumstances, the panel is required to forward its decision to the Center by September 6, 2002. On September 10, 2002, the Center advised the parties the decision due date had been extended to September 24, 2002.
4. Factual Background; Parties’ Contentions
a. The Trademarks
The complaint is based on two trademarks, viz.:
TRINITY INDUSTRIES, INC.
TRINITY and TRINITY INDUSTRIES, INC. are the subjects of various registrations around the world (Exhibit C to the complaint). Trinity avers that TRN Business Trust owns theses trademark registrations. Trinity avers also:
"TRN Business Trust has sufficient common interest in the Domain Name trinity.com for joinder to be permissible."
Trinity asserts that it is engaged in "the manufacture, marketing, and leasing of a variety of products in the construction, transportation and industrial sectors." Trinity comprises six business groups, viz.: Railcar Group, Inland Barge Group, Parts and Services Group, Highway Construction Products Group, Concrete & Aggregate Group, and Industrial Group.
Trinity asserts it has continuously used the trademarks TRINITY and TRINITY INDUSTRIES, INC. in the United States and throughout the world for nearly 35 years, and began using the TRINITY trademark as early as 1966.
Trinity refers, inter alia, to two U.S. trademark registrations and one U.S. application to register a mark, viz.:
|Reg. No. ||Mark||Filed||Registered|
|2,399,084||Trinity Industries, Inc.||Nov. 12, 1998||Oct. 31, 2000|
|2,490,299||Trinity||Nov. 12, 1998||Sept. 18, 2001|
|75/587181||Trinity||Nov. 12, 1998|
The U.S. trademark registrations are for metal pressure-vessel heads for use with container tanks, metal pressure containers, railway cars, and road building materials, namely concrete and aggregate. The trademark registrations around the world relate to similar goods, and usually truck trailers. A registration in Puerto Rico adds machines and machine tools, vehicles, pipes, and the like, plus services of providing food and drink, medical and hygienic and beauty care, legal services, scientific and industrial research, computer programming, etc.
b. The Complaint Re Respondent’s Activities
Trinity asserts that the domain name in issue is identical or confusingly similar to Trinity’s marks, and Trinity’s use of the marks "long predates" any use or registration of the domain name.
Trinity asserts Internet Holding has no rights or legitimate interest in the domain name, is not a licensee of Trinity, and has not received any permission or consent to use the trademark TRINITY.
Trinity asserts Internet Holding is not named Trinity, owns no trademarks or service marks "incorporating Trinity", and has never done business under the name Trinity. Also, Internet Holding is not offering goods or services under "this name", and is not commonly known as Trinity. Trinity contends Internet Holding "has no plans or intentions to use the name Trinity or to offer goods and services under the name Trinity."
Trinity asserts Internet Holding registered the domain name in May 1997, and <trinity.com> has never hosted an active web site in the five years the domain name has been registered. Trinity avers the domain name does not "even display a ‘place holder’ site or an ‘under construction’ site." Trinity concludes –
Internet Holding "does not and has no plans to conduct business under the name Trinity and in association with the Domain Name. Such non-use demonstrates that Respondent has no rights or legitimate interest in the Domain Name."
Trinity contends that the domain name has been registered and used in bad faith. Trinity asserts that, as of July 11, 2002, "there was no evidence whatsoever" of Internet Holding’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Trinity asserts the domain name with the blank web site has "disrupted Complainant’s business." Trinity contends the only logical inference is that the domain name has been registered for the purpose of selling it to a third party in excess of the registration fee.
In the alternative, Trinity alleges Internet Holding has used the domain name to intentionally attempt to attract internet users to "an unused on-line location that by its very nature creates a likelihood of confusion with Complainants’ mark." Trinity contends the domain name "inevitable and misleadingly diverts consumers to that address and has the effect of tarnishing Complainant’s valuable trademark," citing the decision in CSA International (a.k.a. Canadian Standards Association) v. John O’Shannon et al. WIPO Case No. D2000-0071 (March 24, 2000). Trinity asserts that persons seeking "Trinity’s web site are likely to become frustrated or believe that Trinity has no web site and seek out the web sites of Trinity’s competitors instead." Trinity avers Internet Holding’s registration and use of the domain name "for the purpose of diverting Complainant’s customers to a ‘dead-end’ on-line location is tantamount to bad faith."
As another alternative, Trinity alleges Internet Holding’s registration without any legitimate right or interest in the domain name constitutes bad faith, citing NAF Case No. FA0008674. Trinity concludes –
"The requirement in the Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every circumstance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the name." Trinity cites NAF Case No. FA0002000093761.
Trinity requests that the domain name be transferred to TRN Business Trust.
c. The Response
1. Identity or Confusing Similarity
Internet Holding avers that no application for a Trinity trade mark registration preceded the registration of <trinity.com>. Internet Holding asserts no evidence is submitted "as to the extent and quality" of the early uses alleged by Trinity, other than the evidence of the registered marks.
Internet Holding avers that USPTO records show that Trinity’s trademark application has been suspended as shown in Appendix A to the response. Also, Internet Holding avers Trinity is wrong in claiming a filing date of Community Trade Mark No. 176273 of July 18, 2000, when in the absence of claimed priority the May 28, 2002, date of registration is the "relevant date".
Internet Holding contends Trinity does not contend that the domain name is identical or confusingly similar to the mark TRINITY INDUSTRIES, INC. Internet Holding contends the domain name is neither. Internet Holding argues "trinity" is generic having an ordinary meaning in the English language. Internet Holding contends there "is no logic shown" as to how any use of "trinity" in any context other than within the use classes claimed by Trinity could give rise to confusing similarity. Internet Holding points to another US company trading in the construction field as "Trinity Industries Inc." "Trinity Industries Inc." is a "gas distribution infrastructure provider" and has registered <trinityindustries.com>, as shown in Appendix H to the response.
Internet Holding contends the mark TRINITY is "extremely weak". It is a word "in ordinary English usage." Appendix A to the response reveals about 30 registrations in the USPTO of "Trinity" as trademarks or service marks in a variety of fields, e.g.: advertising agency services, computer systems, commercial and residential shelf and cabinet lighting fixtures, tires, diaries, writing instruments, computer software, electric storage batteries for vehicles, financial management and investment planning and analysis, bottled spring water, hearing aids, dental alloy compositions, electrostatic coating apparatus, computer programs recorded on magnetic disks for game playing, retail florist shop services, parts and accessories for model racing cars, renting and managing rental properties, masonry cement and high early strength Portland cement, antifreeze, musical instruments, financial services, and security systems.
Internet Holding contends that Trinity Industries, Inc. appears from its website to be the entity trading in construction, railcars, etc., but no explanation is given as to why the parties should be joined here other than "common interest", what their relationship is, or Trinity Industries, Inc.’s entitlement to use the marks.
Internet Holding urges that Capt’n Snooze Management Pty Limited v. Domains 4 Sale
WIPO Case No. D2000-0488 (July 10, 2000), is of assistance on the question of Trinity’s "entitlement to rely on registered trademarks which post-date the registration of trinity.com." Internet Holding notes the panel in that WIPO case stated in part:
"As all three of these [trademark] registrations were obtained a significant period after the Domain Name in dispute was registered, the Panel does not consider them an appropriate basis for the current claim."
Internet Holding submits that all the points concerning the strength of Trinity’s marks are also relevant to Internet Holding’s legitimate use of and interest in the domain name and "the fact" it was registered as a generic word domain name in good faith with no intent to tarnish Trinity’s marks.
2. Rights and Legitimate Interests
Internet Holding asserts it has not sought permission from Trinity as none is necessary. Internet Holding asserts it is "not currently using trinity.com in the course of trade and is not trading in any field analogous to Complainants." Internet Holding states it has no intention to trade "in a field which would cause its use of trinity.com to come into conflict with third party trademarks."
Internet Holding contends its principal is an international banker, financier and entrepreneur. He facilitates "the conclusion of investment rounds for new and existing enterprises, mergers, acquisitions and take-overs and on occasion develops his own new businesses." Internet Holding maintains "a small select range of generic domain name registrations for use as such [new and restructured corporate entities] new brands." Two examples of other generic names Internet Holding has registered, and "which have since been developed and now point to active websites," are <lease.com> and <super.com>. Screen shots and other information concerning these sites appear at Appendix C to the response.
Internet Holding avers it continues to plan to use <trinity.com> to represent a new brand identity. Such use would not be activated until after conclusion of a suitable deal.
Internet Holding contends it has taken active steps to ensure its domain names are "hosted prudently".
An affidavit by Internet Holding’s principal, Roland Marc Chemtob, supports many of the assertions by Internet Holding concerning its business and registration and use of domain names. Inter alia, Mr. Chemtob states that (a) Internet Holding is not withholding its domain names from any individual or group with a view to "onward sale", (b) the dot-com crash has delayed the launch of two of its businesses associated with generic domain names, (c) Internet Holding pays hosting charges to allow its domain names to point to blank pages, (d) its domain names are not simply registered and "parked", and (e) neither Chemtob nor Internet Holding had Trinity in mind at the time <trinity.com> was registered.
Internet Holding contends that the foregoing "explanation" constitutes demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. In the alternative, Internet Holding contends the "explanation" evidences a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Internet Holding contends also that Trinity has failed to carry its burden on the issue of legitimate interests, citing WIPO Case No. D2001-1320, which cites other decisions which Internet Holding contends support this last contention.
3. Registration and Use in Bad Faith
Internet Holding contends Trinity has failed to provide any evidence of disruption to Trinity’s business and has not shown that the domain name was registered primarily to disrupt any person’s business.
Internet Holding contends that Trinity’s "logical inference" as to Internet Holding’s purpose of "onward sale" is not logical at all. Internet Holding states the Policy requires Trinity to show circumstances that the name was primarily registered for the purpose of selling, etc. Internet Holding cites Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc. WIPO Case No. D2001-0085 (May 23, 2001), for the proposition that, even if Internet Holding had registered <trinity.com> primarily with a view to onward sale, anyone has a right to register common words.
Internet Holding contends that Trinity has shown no evidence in support of its assertion that Internet Holding has used <trinity.com> to intentionally attract Internet users to an unused online location that creates a likelihood of confusion with Trinity’s mark. Neither intent nor commercial gain has been shown, according to Internet Holding. Nor is there any likelihood of confusion. Other domain names are more likely than the present domain name to be confused with Trinity. Internet Holding distinguishes WIPO Case No. D2000-0071 in part because the domain names there in issue were "plainly taken from the Complainant ... [and were] being used to attack the Complainant and to promote the commercial and other interests to the Respondents without a legitimate non-commercial or fair use excuse."
Internet Holding contends Trinity has not shown Internet Holding registered the domain name for the purpose of frustrating Trinity’s customers, and no evidence of actual frustration or confusion has been offered. Internet Holding argues the alleged frustration is more likely to occur by Trinity’s customers visiting the underground construction company’s website at <trinityindustries.com>.
Also, Internet Holding asserts Trinity has adduced no evidence that Internet Holding registered the domain name for the purpose of diverting Trinity customers to a "dead end" online location.
With respect to "passive holding", Internet Holding attempts to distinguish Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 (February 18, 2000), and the Aeroturbine decision, NAF Case No. FA0093674. Internet Holding cites WIPO Case No. D2000-1786, for the following:
"... the Panel regards it as crucial to the success of a Complaint under the Policy that at the time of registration the Respondent at the very least had the Complainant in mind."
In support of its contention that Internet Holding did not have Trinity in mind when the domain name was registered, Internet Holding avers that, if its principal had consulted the various trademark registries before effecting registration, he would have found no entries in respect of Trinity. Nor are Trinity’s marks "common marks" of which Internet Holding might have been expected to have constructive notice, citing NAF Case No. FA000300094375.
Internet Holding’s searches allegedly show 3,085 domain names containing "trinity" in the .com, .net and .org generic top level domain spaces (Appendix E). Internet Holding selected 300 of those in the .com space to show that many businesses and organizations use the name "trinity" (Appendix F).
Finally, Internet Holding attempts to distinguish NAF Case No. FA0002000093761 on five separate grounds.
Internet Holding requests the Panel to deny the remedies requested by Internet Holding.
5. Discussion and Findings
1. The Policy and the Rules
Paragraph 4(a) of the Policy directs that complainants must prove, with respect to the domain name in issue, each of the following:
(1) The domain name is identical or confusingly similar to a mark in which complainants have rights, and
(2) Respondent has no rights or legitimate interests in respect of the domain name, and
(3) The domain name has been registered and is being used in bad faith.
2. Complainants’ Standing In This Proceeding
Internet Holding properly questions the basis for joining the two parties to this proceeding.
Trinity has not presented any evidence as to the relationship between the two entities or any Trinity Industries, Inc. rights under the two marks on which the complaint rests. Trinity simply asserts (1) Trinity Industries, Inc. is a large, well-recognized manufacturer, (2) TRN Business Trust owns all the trademark registrations for the two marks, and (3) TRN Business Trust has "sufficient common interest in the Domain Name trinity.com for joinder to be permissible." This falls far short of establishing in Trinity Industries, Inc. any rights in either of the two marks. Accordingly, the panel finds that Trinity Industries, Inc. has no standing in this proceeding.
This is not the first time the chain of rights under a mark has not been established by a complainant. It bears repeating that the first criterion under Paragraph 4(a)(i) requires that a complainant establish at least prima facie that the complainant has rights under the mark(s) in issue.
3. The Marks
The domain name <trinity.com> is identical to the mark TRINITY. Thus, TRN Business Trust has satisfied this criterion. The operative term in the domain name is the same as the mark TRINITY.
The situation with respect to TRINITY INDUSTRIES, INC. mark is different. Given the ubiquitous nature of the term "trinity" in trademarks and in domain names, as demonstrated by Internet Holding’s response, it is not at all clear that <trinity.com> can be regarded as identical to, or confusingly similar to, the mark TRINITY INDUSTRIES, INC.
In the context of this record, the addition of "Industries, Inc." to the term "Trinity" is a material change. The often cited rule that a domain name comprising a word added to a mark is either identical to, or confusingly similar to, the mark is not applicable here. Trinity is indeed a generic term. "Trinity Industries" is the trade name for another company in the construction field. The TRINITY mark in issue here, as far as the United States is concerned, is applicable to only a specific field. Also, <trinity.com> was registered before any application by TRN Business Trust to register TRINITY as a trademark. TRN Business Trust may have some common law rights in the United States in the TRINITY mark, but TRN Business Trust has not adduced any evidence (other than the statements as to first use in the registration) as to such use. The foregoing, along with the widespread appearance of "trinity" in marks and in domain names of organizations other than TRN Business Trust or the Trinity Industries, Inc. named in the complaint, requires TRN Business Trust to do more than merely restate the first criterion in order to satisfy that criterion.
In light of the foregoing, the panel will confine the ensuing discussion to the mark TRINITY.
4. Rights and Legitimate Interests
TRN Business Trust’s contentions regarding this criterion are apparently factually sound – but for its speculation that Internet Holding has no plans or intentions to use or conduct business under the name Trinity.
Trinity is, as noted above, a generic term. It appears in many marks and in many domain names. The TRINITY mark here must be limited to the fields of use stated on the registrations, and in particular the U.S. registrations. Internet Holding does not operate, and apparently does not intend to operate, in the same business as TRN Business Trust or Trinity Industries, Inc. All the registrations of the TRINITY mark here were applied for after the domain name <trinity.com> was registered. Internet Holding is correct in contending there has been no need for Internet Holding to seek permission from TRN Business Trust to use the term "trinity" in the domain name.
Given the nature of Internet Holding’s business, as described in the response and in the supporting affidavit, it is fair to infer that before notice of this dispute Internet Holding was preparing to use the domain name in connection with a bona fide offering of goods or services. Also, in light of the supporting affidavit, it is fair to infer that Internet Holding has not abandoned its plans to use the domain name. TRN Business Trust has adduced no evidence as to the actual use of the TRINITY mark (other than the stated first uses in the registrations). If Trinity Industries, Inc. has been using the mark as implied in the complaint, Trinity could easily have produced evidence of such use by way of labels, advertising, and the like. On this record, there is no basis to conclude that Internet Holding was in any respect aware, actually or constructively, of the TRINITY mark in issue here before notice of this proceeding.
TRN Business Trust has not carried its burden with respect to this criterion.
5. Bad Faith Registration and Use
On this record, neither bad faith registration nor bad faith use can be found.
Internet Holding’s supporting affidavit denies any intent to sell the domain name. The record here is entirely consistent with the inference that Internet Holding registered the domain name for a legitimate, good faith purpose. Similarly, the record does not support the contention that Internet Holding registered the domain name to prevent TRN Business Trust from reflecting the mark in a corresponding domain name, or to disrupt TRN Business Trust’s business, or to intentionally attract Internet users to Internet Holding’s website by creating a likelihood of confusion.
The TRINITY mark in issue here is for use in a specific field. This is not Internet Holding’s line of business. "Trinity" appears in hundreds of trademarks, trade names and domain names. In light of these facts, it is not reasonable to infer that the presence of the <trinity.com> domain name and inactive website will disrupt TRN Business Trust’s business or frustrate its potential customers.
TRN Business Trust has not carried its burden with respect to this criterion.
In light of the findings by the panel, the panel declines to grant the relief sought by Trinity.
David W. Plant
Dated: September 25, 2002