WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bankrate, Inc. v. HSH Associates International
Case No. D2002-1165
1. The Parties
1.1 The Complainant is Bankrate, Inc., of North Palm Beach, Florida, United States of America, represented by Gunster, Yoakley & Stewart, P.A. also of North Palm Beach, Florida, United States of America.
1.2 The Respondent is HSH Associates International of Butler, New Jersey, United States of America, represented by Christopher J. McHattie, Esq. of Kinnelon, New Jersey, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name is registered with Network Solutions, Inc. of Dulles, Virginia, United States of America.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2002. On December 24, 2002, the Center transmitted by email to Network Solutions, Inc., the Registrar, a request for registrar verification in connection with the domain name at issue. On December 31, 2002, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 6, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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"). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2003. The Response was filed with the Center on January 27, 2003.
3.2 The Center appointed Clark W. Lackert, David M. Kelly and James Carmody as panelists in this matter on February 19, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 Complainant has been using a formative version of the BANK RATE or BANKRATE service marks from at least as early as December 20, 1982. Complainant holds U.S. registrations for trademarks containing BANK RATE or BANKRATE, including a registration for the Service Mark BANK RATE MONITOR & Design for providing financial newsletters first use in commerce on December 20, 1982, and registered on the Principal Register March 17, 1992, (U.S. Registration No. 1679325); a registration for the Service Mark BANKRATE.COM & Design for providing financial information through a global computer network first used August 1998 and registered on the Principal Register December 12, 2000, (U.S. Registration No. 2411942); a registration for BANK RATE MONITOR & Design for publications, namely printed financial newsletters first used in commerce September 1, 1997, and registered on the Principal Register October 31, 2000, (U.S. Registration No. 2399488); a registration for the Service Mark BANKRATE for financial services in the nature of providing financial information through a global computer network, namely financial, career, and insurance advice, lender and tax information and financial tools first used August, 1998, and registered on the Supplemental Register May 21, 2001, (U.S. Registration No. 2572346); and a registration for the trademark BANKRATE.COM & Design for providing financial information through a global network first used April 1995 and first used in commerce August 1998, and registered on the Principal Register December 12, 2000, (U.S. Registration No. 2413258). In these registrations, the Principal registrations include disclaimers of exclusive rights in BANK RATE. Complainant purchased the domain name in March of 1995, and launched the website soon thereafter. Complainant has used, and continues to use, its domain name for its website displaying various formatives of the BANKRATE marks ever since. At the time Complainant purchased the domain name, it was doing business as Bank Rate Monitor but began using, and continues to use, in all of its marketing material in connection with its then corporate name. In November 1998, Complainant changed its corporate name to Intelligent Life Corporation and then subsequently adopted its current corporate name to Bankrate, Inc.
4.2 The BANKRATE.COM mark is displayed, and Complainant�s B editorial Consumer Mortgage Guide tables are published, in numerous newspapers, publications and websites which are circulated to millions of people throughout the United States. In a typical month, the B Consumer Mortgage Guide is circulated in newspapers and publications with circulations that add up to 9,252,851 readers daily, 3,331,198 readers weekly and 1,271,247 monthly. The Complainant�s "" website receives millions of visitors per month and visitation to the website continues to increase. In August 2002, comScore Media Matrix measured 3,000,000 unique visitors and Complainant�s internal advertising management software measured 29 million page views. In October 2002, comScore Media Matrix measured 4,000,000 unique visitors. In addition, Complainant regularly advertises on other websites and in publications. Complainant spent over $436,764 since June 2000, on advertising which has enabled the BANKRATE marks to become famous among consumers and financial institutions who are looking for financial information.
4.3 Respondent, HSH Associates, Financial Publishers, is the nation's largest publisher of mortgage and consumer loan information and rates. HSH was founded in 1979, and was one of the first to utilize the Internet in this marketplace. As an independent, objective source of data, HSH has earned a reputation as the best source for current and accurate loan and bank rate information. HSH's expertise and rate information can be found in print publications including The New York Times, the Wall Street Journal, Money magazine, American Banker, Smart Money, Seattle Times, Baltimore Sun, Newsweek, Denver Post, Consumer Reports, Reader's Digest, USA Today, and many others. HSH's data and commentary can frequently be seen and heard on broadcast outlets like the Bloomberg and CBS Radio Networks, DTN, MSNBC, NBC's Today show and others.
4.4 HSH Associates collects current information from some 2,000 mortgage lenders, banks and brokers throughout the country. Each institution in its database is contacted individually at the branch level to obtain consistent, reliable data. Clients of HSH Associates include or have included Fannie Mae, Freddie Mac, The Federal Reserve, Runzheimer International, Citibank, Merrill Lynch, Countrywide, National Association of Realtors, Money, Congressional Budget Office, the State of New York Banking Department, Bear Stearns, Morgan Stanley Dean Witter, the Consumer Mortgage Coalition, National Education Association, AFL/CIO Union Privilege, lenders, mortgage shoppers, major media and members of the Fortune 500. HSH Associates does not make nor broker mortgages. The HSH website is the only portion of HSH�s business that accepts advertising -- and only in areas clearly labeled as advertising forums. HSH claims that it is the exclusive source for objective, editorial, daily mortgage and bank rate statistics.
4.5 HSH's mortgage information - including its daily statistics on bank rates and other valuable content - is the centerpiece of its website, a resource site which draws thousands of visitors daily. HSH is a legitimate business entity making information regarding bank rates widely available to the consumer. In 1992, Respondent registered its domain name. In May 1995, HSH registered four additional domain names: ,, and , as adjuncts to its domain name.
5. Parties� Contentions
A. Complainant
5.1 The disputed domain name is confusingly similar to Complainant�s United States registered marks, as the domain names incorporates the plural form of the phonetic equivalent of the word portion of several of Complainant�s registered marks. Therefore, Complainant is entitled to the presumption that the domain name is likely to cause confusion. Buy Owner International, Inc. v. Tri-Star Realty, WIPO Case No. D2002-0408 (August 16, 2002); Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (May 18, 2000).
5.2 Respondent should be considered as having no rights or legitimate interests with respect to the domain names that are the subject of the Complaint because Respondent does not hold any trademark registrations or have any other rights to similar trademarks or service marks. Complainant was making extensive use of its BANK RATE marks for more than 13 years prior to Respondent�s registration of the disputed domain name. The disputed domain name was registered after Complainant registered its domain name . Respondent is not commonly known as "Bankrate". Respondent has not licensed or gained permission from Complainant to use the domain name or any of Complainant�s other marks in its family of marks. Respondent has never been a representative of Complainant. In order for Respondent to be "legitimate" it must make non-infringing use of Complainant�s famous mark. Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000).
5.3 Respondent should be considered to have registered, and be using the domain name in bad faith. Respondent is in the same area of trade and should have known of Complainant�s interest in the domain name prior to registering the disputed domain name. In fact, it would be surprising that Respondent would not have been made aware of Complainant�s registration at the time Respondent registered the disputed domain name. Respondent should have done further investigation to determine whether a third party had rights in the BANK RATE or BANKRATE marks. Respondent is using, and intends to continue using, the domain names in a way that creates confusion in minds of consumers seeking financial advise on the Internet and intentionally diverts consumers to Respondent�s site thereby gaining from Complainant�s extensive good will. In fact, Respondent is using the domain names for commercial purposes in the same field as Complainant which is creating confusion in the minds of the financial community and consumers looking for financial information. An Internet user who inadvertently adds an "s" by typo to Complainant�s domain name will be directed to Respondent�s site rather than Complainant�s site.
B. Respondent
5.4 The "bankrate" and "bankrates" terms are generic for the bank rate monitoring services offered by Respondent since 1979 and Complainant.
5.5 Respondent adopted and has used the domain name in good faith as a bank rate information address since its registration in May of 1995, along with its contemporaneous registration of the domain names , , and for the same services.
5.6 All of the alleged BANK RATE Trademark Registrations cited against Respondent show dates of first use subsequent to Respondent�s registration of its domain name. Moreover, all of the alleged BANK RATE Trademark Registrations cited against Respondent either: (a) expressly disclaim any right to exclusive use of the term "bank rate"; or (b) are Supplemental Registrations which evidence the U.S. Patent & Trademark Office concluding that the term "bank rate" is descriptive - a finding which the Complainant acknowledged by accepting supplemental registration.
5.7 Complainant Bankrate, Inc. (which was not even known by that name until September 20, 2000) knew or should have known of Respondent�s use of the domain name since May of 1995, approximately 8 years ago, and knew at least as early as November of 1997, as the then-President of Complainant offered to purchase Respondent and/or all of its assets and discussed the domain name without objection.
5.8 Moreover, under the Policy, paragraph 4(a), for a Complainant to succeed, it must establish that the domain name is not being used primarily for a bona fide business or commercial purpose, and that it is not intended for such use in the future. Respondent is making bona fide use of the domain name. In this regard, Respondent has used and has a continued intention of using the domain name (i) to exchange goods, services, or property; (ii) in the ordinary course of its trade and business; and (iii) to facilitate the exchange of goods, services, information, or property in the ordinary course of its trade and business.
5.9 Similarly, Respondent has not, and has no intention of using the domain name (i) for the purpose of selling, trading or leasing . . . for compensation; (ii) for the purpose of the unsolicited offering to sell, trade or lease . . . for compensation; (iii) for personal, noncommercial purposes; and (iv) for the expression of noncommercial ideas.
5.10 Respondent alleges that Complainant�s Complaint constitutes an abuse of the administrative proceeding pursuant to paragraph 15(e) of the Rules, i.e., reverse domain name hijacking.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Policy, paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademarks BANK RATE and BANKRATE.COM and is satisfied that the Complainant has proven some rights in such terms, although the scope of protection of the trademarks is not clear from the record before the Panel (i.e., Supplemental registrations and Principal registrations for composite trademarks with BANK RATE or BANKRATE.COM disclaimed in these registrations). The Panel need not review these rights or their identity or confusing similarity to the domain name in issue because the Complaint fails on the other two grounds.
6.3 The record does show legitimate descriptive fair use of "bank rates" and Respondent�s registration of the domain name in 1995 for its loan information publishing business (founded in 1979 and the largest in the United States). Respondent has made similar descriptive uses of the domain names and . Complainant has not offered any evidence that Respondent�s use is illegitimate. The Panel hereby finds that Respondent has shown legitimate fair use of the domain name.
6.4 The record has no evidence of Respondent�s bad faith under Policy, paragraphs 4(b)(i)-(iv). Accordingly, the Panel finds that Complainant has not met its burden of proof as to paragraph 4(a)(iii) of the Policy that the domain name was registered and is being used in bad faith.
6.5 The record does not show sufficient evidence to support Respondent�s claim of reverse domain name hijacking.
7. Decision
7.1 For all the foregoing reasons, the Complaint is denied, and Respondent�s claim of reverse domain name hijacking is denied.
Clark W. Lackert
Presiding Panelist
James Carmody
Panelist
David M. Kelly
Panelist
Dated: March 4, 2003
Full & Egal Universal Law Academy