'Trinity' found to be generic in domain name case
In TRN Business Trust and Trinity Industries Inc v Internet Holding Group, World Intellectual Property Organization panellist David Plant has allowed the registrant of 'trinity.com' to retain ownership of the domain name, finding that the word 'trinity' is generic and that the registrant and complainants are not in the same field of business.
The complainants, TRN Business Trust and Trinity Industries, based in Texas, claimed that the domain name 'trinity.com' was identical to their registered TRINITY and TRINITY INDUSTRIES INC marks. They also argued that the registrant, Internet Holding Group (IHG), had no rights and legitimate interests in the domain name, and that it had registered and used the domain name in bad faith.
IHG countered by claiming that the word 'trinity' is generic and that a large number of US trademark registrations for TRINITY have been issued to parties other than the complainants in a variety of classes. IHG, which registers and uses generic words for a variety of corporate branding projects, stated that it did not compete with the complainants in the same field of business and that it should be allowed to retain ownership of the domain name.
The panellist, Plant, agreed that 'trinity' is a generic term and found that:
"given the ubiquitous nature of the term 'trinity' in trademarks and in domain names [...], it is not at all clear that 'trinity.com' can be regarded as identical to, or confusingly similar to, the mark TRINITY INDUSTRIES INC."
Plant also found that the parties are not in the same field of business. Thus, he concluded that in light of the fact that 'trinity' is generic and appears in hundreds of marks and domain names, it is not reasonable to infer that 'trinity.com' will disrupt the complainants' businesses or frustrate their potential customers.
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP, Washinton DC
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