Generic Top Level Domain Name (gTLD) Decisions

P.O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA

DECISION
Forum File FA 0001000093466

Western Hay Company
Valdosta, GA

COMPLAINANT

Carl Forester
DeFuniak Springs, FL

RESPONDENT

This is a DOMAIN NAME dispute between the parties and will be decided on the record provided by the parties. Neither party is represented by counsel.

ISSUE

The Domain Names at issue, registered with Network Solutions, are

Westernhay.com
Westernhay.net

SUMMARY OF EVIDENCE

Western Hay Company, Inc. is a company which has been incorporated in the State of Utah since June 1987; they apparently do business in that state as well as other locations including Valdosta, Georgia. Their principal business is the sale of "fine horse and dairy products", presumably including hay from the west. Both parties use the words Trademark and Service Mark in their discussion, but there is no documentation regarding any certification from the United States Patent and Trademark Office. Western Hay Company, Inc. uses that designation on its letterhead, advertising items, business cards, mailing labels, invoices and possibly other business papers. Complainant by letter of January 17, 2000 requested that Respondent release the westernhay.com name to them. Complainant vigorously asserts that westernhay.com and westernhay.net are confusingly similar to its trademark or servicemark in which the Complainant has rights.

Mr. Forester asserts that the names are not identical or confusingly similar to a trademark or servicemark in which the complainant claims rights. He notes that Complainant consistently refers to itself as Western Hay Company, Inc. and that it does not refer to itself as westernhay. He also presented copies of communication showing that he offered to transfer the disputed site to Complainant for reimbursement of his costs and an apology to his wife. He states that he created a discussion forum on the disputed website for his wife, a former jockey. Because of her former occupation she has knowledge which would be useful in educating others on how to properly take care of a horse — including proper nutrition. The website focuses primarily on the merits of hay grown in the west.

Mr. Forester also cites various provisions of the ICANN Domain Name Dispute Resolution Policy, and vigorously disputes Complainant’s recital of events.

FINDINGS OF FACT

1. Complainant states that Western Hay Company, Inc. is its registered trademark/servicemark, and operates a business under that name.
2. Respondent operates what he calls a discussion forum on a website known as westernhay.com.; he offers nothing for sale.
3. A record was created by the Respondent for both westernhay.com and westernhay.net in June 1999.
4. Respondent offered to sell the disputed website to Claimant for his costs; Claimant recited in his petition than an oral agreement for this amount was reached. Claimant subsequently maintains that Respondent’s wife attempted to obtain goods for the release of the disputed website. Respondent denies this; he did ask for an apology.
5. Claimant asserts that it has a legitimate business interest in the disputed website; Respondent claims that he has a legitimate interest in the same website.
6. Both parties are guilty of exchanging intemperate remarks.

CONCLUSIONS

The parties both want this disputed website. Western Hay Company, Inc. believes that potential customers or other business inquiries to westernhay.com would be confused if they came upon westernhay.com and found it to be a discussion forum instead of a place of business. When one "surfs the net", one often encounters name similarity, and in this case surely one would quickly ascertain that westernhay.com was not the Western Hay Company, Inc. of Utah. Releasing the disputed website for the costs of registration plus an apology does not seem to violate any business principle.

In the United States, "western" is an adjective that generally refers to a particular section of the country (including Utah) — we talk about "western apples", "western mountains", "western saddles", etc. just like we talk about Florida oranges or Georgia peaches, and if there were a Florida Orange Company, it would be easily distinguishable from Florida oranges — the same would hold true for Georgia peaches. The phrases could be said to be generic.

DECISION

It is the decision of the undersigned that the disputed Domain Names shall not be transferred to the Claimant.

This the 3^rd day of March 2000.

Honorable Marilyn W. Carney

Retired Chief Judge

Arbitrator

I certify that I have no known conflict of interest to serve as Arbitrator in this proceeding.

Honorable Marilyn W. Carney

Retired Chief Judge

Arbitrator

NOTE: Mr. Forester’s comments and demands particularly in his additional response letter of February 17, 2000 were clearly unfounded and unnecessary attacks on the National Arbitration Forum and its Arbitrators; in a different forum he would have been sanctioned.