Cold Spring Granite Company v. Barnard Johnson Associates
Claim Number: FA0807001214248
Complainant is Cold Spring Granite Company (“Complainant”), represented by Christopher
J. Schulte, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <granitebronze.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2008.
On July 9, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <granitebronze.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 30, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on July 22, 2008.
On July 29, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
On July 31, 2008, the parties filed with the National Arbitration Forum under the National Arbitration Forum’s Supplemental Rule 6 a Joint Request to Stay the Administrative Proceeding. On July 31, 2008, the Panel granted this request, staying the proceedings for a one-time period of forty-five days until September 12, 2008.
On September 11, 2008, Complainant filed a Request to Remove the Stay of Administrative Proceeding under the National Arbitration Forum’s Supplemental Rule 6. On September 12, 2008, the Panel granted Complainant’s request and proceeded to a decision in this case.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant and its predecessors in interest have used the GRANIT BRONZ mark in connection with their business of manufacturing and marketing memorials, mausoleums, columbaria, benches, crypts, plaques and vases since at least 1960.
Complainant has invested substantial sums of money in developing and marketing its products and services under the GRANIT BRONZ mark and has developed substantial goodwill and customer loyalty under the same mark through more than forty years of continuous use in commerce.
Complainant is the owner of a pending U.S. Trademark Application for the trademark and service mark GRANIT BRONZ, serial no. 77/368645, filed on January 10, 2008.
Respondent registered the <granitebronze.com> domain name on April 29, 2000.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s trademark or service mark for any purpose.
Respondent’s domain name is confusingly similar to Complainant’s mark.
Respondent uses the disputed domain name to lure unsuspecting Internet users to a web site which sponsors links to websites of Complainant’s business competitors.
Respondent registered and uses the contested domain name in bad faith.
Respondent in its response to the Complaint herein, recites: “[W]e would be more than happy to sign a release or assignment of the registration [of the disputed domain name] to Cold Spring Granite or to whomever they deem appropriate.”
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which 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.
Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions. See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005).
Respondent does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the disputed domain name be transferred to Complainant. Indeed Respondent, in its written response to Complainant’s Complaint, has affirmatively indicated its willingness to have the domain assigned to Complainant. Thus the parties have effectively agreed in writing to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.
Accordingly, it is Ordered that the <granitebronze.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 17, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum