Medicis vs MRX.com, Neil Gerardo and MRX Technologies
Medicis Corporation hired the most expensive Intellectual Property Law Firm
on the planet and lost.
By a unanimous decision, the World Intellectual Property Rights Organization (WIPO)
ruled in favor of Neil Gerardo,
upholding his international legal rights as the sole owner of MRX.com;
defeating all international legal claims filed by Medicis Corporation.
(Reference WIPO Case # D2002-0462)
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Parties: the Complainant in this administrative proceeding is Medicis Pharmaceutical Corporation, a Delaware corporation, with its principal place of business at 8125 North Hayden Road, Scottsdale, Arizona 85258-2463, United States of America. The Respondents in this administrative proceeding are MRX Technologies, Inc., and Neil Gerardo. The Registrant of the domain name is listed as MRX Technologies, Inc., United States of America. The Registrant has been dissolved, however, and thus Neil Gerardo, the principal of the Registrant, is acting as the Respondent in this administrative proceeding. The Domain Name and Registrar: The domain name at issue is which is registered with Network Solutions Inc., in Herndon, Virginia, United States of America. Procedural History: A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") by e-mail on May 15, 2002, and in hardcopy on May 16, 2002. On May 22, 2002, the WIPO Center determined that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). At that time, the WIPO Center notified the Respondent of the commencement of this administrative proceeding and set a deadline for the Response of June 11, 2002. The parties agreed to an extension of the deadline for the Response to June 18, 2002. The Response was received by the WIPO Center on June 18, 2002. The Administrative Panel was informed of the WIPO Center’s receipt of a supplemental filing by Complainant and was given sole discretion to determine whether to admit and consider the supplemental filing in rendering its decision. Based on the failure of Complainant to allege any evidence of bad faith registration in its initial Complaint and Complainant’s acknowledgment of Respondent’s legitimate interest at the time of registration, the Panel elected to proceed to a decision without considering Complainant’s supplemental filing. Factual Background: Complainant, Medicis Pharmaceutical Corporation, is a pharmaceutical company founded in 1988. Complainant’s stock is currently listed on the New York Stock Exchange under the trading symbol MRX. Neil Gerardo conceived the MRX (magnetic resonance and soft spectrum coupled X-ray laser), technology in approximately May 1991. Mr. Gerardo registered the disputed domain name in October 1995. Subsequently, Mr. Gerardo formed the corporation MRX Technologies, Inc., in 1996. The corporation was dissolved sometime after 1997. The domain name was renewed by Mr. Gerardo in June 2000. Parties’ Contentions: A.Complainant asserts that its stock has traded under the MRX symbol on the New York Stock Exchange since its public offering in 1990. Complainant claims that it has acquired trademark rights in its MRX New York Stock Exchange symbol. To support this contention, Complainant indicates that for the past three years it has used the MRX New York Stock Exchange logo in its annual report, on its web site, and on a corporate folder given to investors. Further, Complainant asserts that a search of several major Internet search engines for the term "MRX" revealed hits for stock company information regarding Complainant. Complainant claims that its long-standing use of MRX is sufficient to show that MRX is a source identifier for Complainant. Complainant asserts that the disputed domain name is identical to Complainant’s well-known trading symbol MRX. Complainant asserts that it became aware of Respondent’s registration of the disputed domain name in August 2001. At that time Complainant received an email from Respondent stating that ", your NYSE symbol, is available! Please call Neil Gerardo at 702.436.0693." According to Complainant Mr. Gerardo sent a follow-up inquiry in November 2001 to which Complainant responded inquiring about the availability and cost of the domain name. Mr. Gerardo responded that the domain name was available but that he would prefer to license it rather than sell it and suggested a license fee of between $500,000-$5,000,000. Mr. Gerardo subsequently followed up with Complainant via several emails and indicated that if Complainant was not interested in the domain name he would contact another entity that might be interested. Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent owns no valid intellectual property rights, is not commonly known by the domain name, has no relationship to Complainant and has not been authorized by Complainant to use its MRX New York Stock Exchange symbol. Further, Complainant indicates that MRX Technologies, Inc., does not exist. Complainant conducted an investigation prior to filing the Complaint. According to Complainant the investigation revealed that "Respondent’s intent when registering the domain name in October 1995, was to publish a legitimate web site related to the company MRX Technologies, Inc. According to the investigation, MRX Technologies, Inc. was started in 1986 [sic, 1996]. ‘MRX’ stood for ‘magnetic resonance and soft spectrum coupled x-ray laser.’" Complainant concludes therefore that "although Respondent may have had a right or legitimate interest in the subject domain name at the time of registration (i.e., October 1995), once MRX Technologies, Inc. failed and ceased to do business, Respondent abandoned any rights in the subject domain name." (Emphasis added). Complainant claims that the domain name was since renewed and is being used in bad faith. Complainant asserts that the only apparent reason for Respondent’s renewal of the domain name was to sell or license the domain name to an entity, such as Complainant, that does have rights or legitimate interests in the term MRX. Complainant concludes therefore that: Although the subject domain name may have originally been registered with a good-faith intent to develop a web site and promote the business of MRX Technologies, Inc., when the Company failed in 1998, Respondent’s rights to the subject domain name were abandoned. Notwithstanding this abandonment of rights and legitimate interests in the domain name, Respondent renewed the registration for the subject domain name in June 2000. The renewal of the subject domain name was in bad faith since Respondent is now using the subject domain name to sell or rent, or otherwise transfer the domain name registration to Complainant as it is Complainant’s New York Stock Exchange trading symbol, as well as to prevent Complainant from expressing its New York Stock Exchange trading symbol, another designation for Complainant, in a domain name. Respondent asserts that Complainant does not own trademark or service mark rights in MRX. According to Respondent, MRX is a registered trademark for Alcon Laboratories, another pharmaceutical company. Furthermore, Respondent claims that Complainant has failed to establish that rights in a New York Stock Exchange symbol are equal to trademark or service mark rights. Respondent claims that Complainant’s stock was initially traded on the NASDAQ under the symbol MDRX, and that the MRX symbol was not assigned to Complainant until September 1998 when Complainant switched from the NASDAQ to the New York Stock Exchange. These allegations appear to be confirmed by Complainant’s 10-K filings. Respondent asserts that it has rights and legitimate interests in the domain name. Respondent registered the domain name in 1995. According to Respondent this was nearly three years before Complainant was issued MRX as its New York Stock Exchange symbol. Respondent claims that in his 1995 registration of the domain name he listed MRX Technologies, Inc. as the registrant knowing that he was going to incorporate the entity shortly after the registration. According to Respondent the corporation and web site were operational until Respondent suffered a series of health problems starting in 1997 which have continued until recently. Respondent claims that he did intend to re-establish the business despite the decision to dissolve the corporation. Furthermore Respondent indicated that he attempted to have the registrant changed from MRX Technologies, Inc. to him individually but that the registration has not been changed as requested. Respondent claims that he did not register or renew the domain name in bad faith. According to Respondent he actively used the domain name in connection with a web site disseminating information about his MRX technology. After several years of actively pursuing the development of the technology, Respondent claims that he considered licensing the domain name solely as a result of his prolonged period of illness. Respondent claims furthermore that the primary reason for licensing the domain name was to raise capital to pursue the development of the MRX technology and thus Respondent preferred to license the domain name rather than sell it.
Respondent indicates that it would have been impossible for Respondent to have acted in bad faith vis-à-vis the Complainant since Complainant did not have a trademark for MRX and the Complainant’s stock did not trade under the MRX New York Stock Exchange symbol at the time Respondent registered the domain name. Respondent contends that Complainant has brought this Complaint in bad faith and thus requested a finding of reverse domain name hijacking. Respondent further requested that the registration of the disputed domain name be changed to Neil Gerardo, individually. Discussion and Findings: A. Applicable Rules and Principles of LawParagraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision: "A Panelist shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith. Identical or Confusingly Similar to Trademark or Service Mark Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant claims common law service mark or trademark rights arising from its New York Stock Exchange ticker symbol. Yet, Complainant’s claim of common law rights is supported only by the existence of a ticker symbol whose sole use is alleged to be with investors in the context of investing. Furthermore, MRX has been a registered trademark of Alcon Laboratories, a company in Complainant’s business field, pharmaceuticals, since September 15, 1981, and Complainant traded under a different ticker symbol until 1998, three years after the registration of the domain name in dispute. Complainant has not made a persuasive showing of proving that it has trademark rights in a mark that is confusingly similar to the domain name. The Panel finds that Complainant has failed to establish that the MRX ticker symbol functions as a common law trademark in which Complainant has rights. The Panel questions whether mere use of a stock ticker symbol with investors can ever rise to the level of creating common law "trademark rights" within the meaning of Paragraph 4 of the Policy because the ticker nickname use is not use of a brand name to identify the particular product or service of the proprietor. In any event, a finding that a stock ticker symbol has been used in a trademark sense sufficient to give rise to common law rights would require more compelling proof than has been presented by the Complainant here. Respondent’s Rights and Legitimate Interests in the Domain Name: Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrant’s rights or legitimate interests in the name. One such circumstance is showing that Respondent is commonly known by the domain name. In this case, Respondent registered the domain name and shortly thereafter incorporated MRX Technologies, Inc. Respondent may also demonstrate a legitimate interest in the domain name by demonstrating use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The evidence indicates that prior to any notice of the dispute Respondent was using the domain name in connection with his efforts to develop and fund the MRX technology. A simple offering of any goods or services or incorporation of a company with a corresponding name does not necessarily constitute a legitimate interest. This is particularly true if it appears that a domain name registrant is acting in bad faith and is merely attempting to circumvent the Policy. That does not appear, however, to be the case in this situation. At the time of the registration, Respondent had developed the MRX technology and registered the domain name in an effort to disseminate information regarding the technology. Complainant does not dispute this and in fact acknowledges that "Respondent’s intent when registering the domain name in October 1995, was to publish a legitimate web site related to the company MRX Technologies, Inc." This Panel finds, therefore, that Respondent had a legitimate interest in the domain name at the time it was registered. The complexity arises in this case because in 1998 the Respondent dissolved the corporation and ceased using the domain name. Complainant asserts, therefore, that Respondent has no existing legitimate interest in the domain name because Respondent abandoned its rights. Because this Panel determines (below) that the Complainant has not shown that Respondent registered and used the domain name in bad faith, this Panel does not address the issue of whether Respondent continued to have a legitimate interest in the domain name after 1998. Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain name has been registered and used in bad faith. As noted, at the time of registration Respondent registered a domain name that corresponded to the MRX technology that the Respondent had developed. Further, Respondent apparently used the domain name in connection with this technology. Complainant alleges that Respondent acted in bad faith by renewing its registration of the domain name. Under the Policy, however, the Complainant must provide evidence that the domain name "has been registered and is being used in bad faith" in order to justify a transfer of the name. Although the examples of bad faith set forth in the Policy have led to the interpretation that actual use may not always be required to satisfy the Policy (but instead that mere nonuse or an intent to sell can sometimes satisfy the use requirement) there is no similar justification for straying from the plain wording of the policy and allowing bad faith renewal to satisfy the bad faith registration requirement. Some of the examples of bad faith registration and use indicate that bad faith at the time of acquisition by another of the name might satisfy this element, but alleged bad faith renewal by the same registrant of a name that was not initially registered in bad faith does not meet the requirements of the Policy of proof that the name was registered in bad faith.
In this case, Complainant relies solely on the argument that there was bad faith at the time of renewal and has conceded that the domain name was not registered in bad faith. Complainant has failed to establish bad faith registration, and therefore has not satisfied the requirements of paragraph 4(a). Reverse Domain Name Hijacking: Paragraph 15(e) of the Rules provides, "If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."Respondent claims that Complainant has brought its Complaint in bad faith. Because this Panel has found that Complainant (1) failed to prove, and even to allege, registration in bad faith; (2) acknowledged an initial legitimate interest by Respondent; and (3) asserted a dubious claim regarding Complainant’s trademark rights, it is reasonable to consider whether the Complaint was brought in bad faith. Asserting a claim that does not prove to be meritorious under the UDRP is not by itself indicative of bad faith. In this case Respondent repeatedly contacted Complainant with offers to license the domain name and proposed an exorbitant license fee of $500,000 to $5,000,000. Given this situation, it is not clear to the Panel that the Complaint was brought in bad faith. The Panel thus finds that Respondent has not shown that the Complaint was brought with bad faith within the meaning of paragraph 15(e).
Decision :This Panel finds that Complainant has not shown that the domain name was registered in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel declines to direct the Registrar to transfer the disputed domain name to the Complainant.
Roderick M. Thompson
G. Gervaise Davis III
Dated: August 22, 2002