Trinity Industries, Inc.,; TRN Business Trust v. Internet Holding Group

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, and

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

Ser. No.

Mark

Filed

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.

6. Decision

In light of the findings by the panel, the panel declines to grant the relief

sought by Trinity.

David W. Plant

Sole Panelist

Dated: September 25, 2002