WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Qosina Corporation v. Qosmedix Group
Case No. D2003-0620
1. The Parties
The Complainant is Qosina Corporation, Edgewood, New York, United States of America, represented by Reed Smith LLP, United States of America.
The Respondent is Qosmedix Group, Beograd, Serbia and Montenegro.
2. The Domain Name and Registrar
The disputed domain name <qosmedixgroup.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2003.
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 August 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2003. A Response was filed with the Center on August 19, 2003.
The proceedings were suspended at the Complainant’s request on September 4, 2003, and recommenced, again at the Complainant’s request, on October 13, 2003.
The Center appointed George R. F. Souter as the sole panelist in this matter on October 27, 2003. The Panel finds that it was properly constituted. 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
The Complainant claims that its Qosmedix division, founded in 1987, is a global supplier to the cosmetic, skin, bath, and spa industries.
The Complainant provided evidence as to its ownership of two US Federal trade mark registrations of the mark QOSMEDIX, in classes 3, 5, 8 and 21, claiming first use in commerce in 1992, 1994, 1995 and 1988 respectively.
The Complainant also supplied a copy of a Qosmedix product catalog, which lists an extensive range of products.
5. Parties’ Contentions
The Complainant alleges that the domain name at issue, <qosmedixgroup.com> is "virtually identical and/or confusingly similar" to its QOSMEDIX trade mark, in particular that the domain name at issue merely adds the non-distinctive term "group" to its trade mark. The Complainant further alleges, citing the decision in Universal Studios, Inc v. G. A. B. Enterprises, WIPO Case No D2000-0416, that the ".com" gTLD component of the domain name is irrelevant to the consideration of confusing similarity.
The Complainant contends that the Respondent had no rights or legitimate interest in respect of the domain name, and that the Respondent registered and used the domain name in bad faith. In connection with the bad faith issue, the Complainant referred to the web site operated by the Respondent, in which, in the Serbian and Italian languages only, reference was made, inter alia, to the sale of cosmetics.
Mr. Brakus Dusan, General Director of the company owned by the Respondent, explains the provenance of the domain name at issue as follows (sic): "I wanted the word to be unique, universal with some elements form the Western world in it since the products is being produced in a Western country. Since I produce medical cosmetics for beauty saloons I combined words like Q = quality, QOS = the root of the word cosmetics and MEDIX = medicine i.e. health and in that way I got the name of the company."
Mr. Dusan also comments (sic): "Belive me that I am very confused with the coincidence of of everything previously mentioned especially bearing in mind that the presentation was exclusevely meant for our domestic (Serbian) market and as the result I did not have it translated in the English language. There is only a translation in Italian because our production line is situated in Italy. If you consider that I endangered somebody's interest with this, please do contact me as soon as possible so that we can overcome this problem in the best possible way for all the parties. Thank you very much for your understanding."
On August 21, 2003, Mr. Dusan e-mailed the WIPO Arbitration & Mediation Centre, as follows (sic):
"After my response I have sent you and the e-mail that I got from Geneva I concluded that there is a court case going on.
In my letter I told you how things stand and I realized that my financial means nor interest do not allow me to go further in this matter.
I from my part will contact the Internet Web Agency who made the web site for my company to close down the disputed site from August 22, 2003.
The people from the Agency will take down our Internet Presentation and you can take down the URL. I hope that this will settle all our coincidental disputes caused by my ignorance, i. e. the web agency who did not check if a similar URL already existed.
As soon as I make a new URL I will inform you accordingly."
A copy of this e-mail is also sent to the company Qosina in the USA (the Complainant)
The Panel’s attention has been drawn to an Assignment of the domain name from the Respondent to the Complainant, duly signed by the Respondent. It appears that this assignment has not been sufficient to effect the transfer, for technical reasons independent of the parties.
6. Discussion and Findings
The situation in which a respondent has agreed to transfer a domain name during proceedings has been raised a number of times in previous cases, in Deutsche Banke v. Carl Siegler, WIPO Case No. D2000-0984, Juventus F. C. S. p. A v. Sergio Bragança, WIPO Case No. D2000-1466, Desotech N. V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500, The State of the Netherlands v. Goldnames Inc, WIPO Case No. D2001-0520, et al.
In these cases the Panel has consistently taken the view that a situation similar to the situation in the present case is sufficient to deem that the three tests of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy have been met, and has ordered transfer of the domain name to the Complainant. The Panel in the present case agrees with this approach, and, accordingly, finds for the Complainant.
The Sole Panelist decides that the registration of the domain name <qosmedixgroup.com> be transferred to the Complainant.
George R. F. Souter
Dated: November 10, 2003