Cold Spring Granite Company
v. Barnard Johnson Associates
Claim Number: FA0807001214248
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@granitebronze.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.”
DISCUSSION
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).
DECISION
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
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