Generic Top Level Domain Name (gTLD) Decisions

THE NATIONAL ARBITRATION FORUM

PO BOX 50191

MINNEAPOLIS, MINNESOTA 5405 USA

Fiber-Shield Industries, Inc.,
26 Old Dock Road
Yaphank, NY 11980,

COMPLAINANT

vs.

Fiber Shield LTD.
3-130 Don Park Rd.
Markham, ON L2R-1C3
CA,

RESPONDENT

DECISION
FILE NO.: FA0001000092054

The above entitled matter came on for an administrative hearing on February 29, 2000 before the undersigned arbitrator on the Complaint of Fiber-Shield Industries, Inc. ("Complainant"), represented by Patrick O. Killian, Esq., Killian, Legakis, & Vetere L.L.P., 1067 A Route 25A, Stoney Brook, New York 11790, against Fiber Shield LTD. ("Respondent"), represented by Irene L. Matthews, Esq., Suite 104 Chelsea Square, 7225 Woodvine Ave., Markham, Ontario L3R-1C3. Upon the written submitted record including the Complaint, the Response to Complaint and Complainant’s Rebuttal to Respondent’s Reply to Complaint, the following DECISION is rendered:

PROCEDURAL FINDINGS

Domain Name: fibershield.net

Domain Name Registrar: Network Solutions

Date of Domain Name Registration: June 28, 1997

Date Complaint Filed: January 18, 2000

Date Response to Complaint Filed: February 10, 2000

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on January 20, 2000 in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. The Complaint, the Response and Complainant’s Rebuttal to Respondent’s Reply to Complaint were docketed and forwarded to the undersigned Arbitrator for decision.

FINDINGS OF FACT

1. Neither the complainant nor the respondent contest the jurisdiction of the Forum or the undersigned arbitrator to resolve this controversy.

2. Complainant has a United States Patent and Trademark Office registration number 1, 429,690 dated October 13, 1999 for the mark "FIBER-SHIELD"

3. Complainant registered the domain fibershield.com on or about June 13, 1997 with Network Solutions, Inc.

4. Respondent has been incorporated and has been doing business in Canada under the name "Fiber Shield (Toronto) LTD.". There is no allegation of respondent that there has been a trademark registration anywhere for any variation of its corporate name, although there is an allegation of respondent that it owns the "Fiber-Seal" trademark.

5. Respondent claims that it was unaware of the business activity of complainant under the name "Fiber Shield Industries, Inc.", or any variation thereof, until it attempted to register its own domain name as "fiber-shield.com". Upon being advised of the unavailability of such name due to complainant’s prior registration, respondent proceeded to register the domain "fibershield.net."

6. It appears clear that respondent registered fibershield.net with actual awareness of a confusingly similar prior registration in favor of complainant. It further appears clear that respondent does not claim any rights superior to the trademark registration of complainant of the name "fiber-shield", in Canada, the United States or elsewhere.

7. In light of the above, I find that respondent registered the domain name fibershield.net in bad faith and that respondent has no rights or legitimate interest with respect to said domain name.

CONCLUSION

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name "fibershield.net" should be and hereby is canceled.

2. Respondent does not have rights or legitimate interests in respect of the domain name "fibershield.net" because it is not making a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain, to misleadingly divert customers or to tarnish the trademark or service mark at issue.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "fibershield.net" REGISTERED BY RESPONDENT FIBER-SHIELD (TORONTO) LTD. BE CANCELED.

Signed this 29th day of February, 2000 by Judge James A. Carmody (Retired), Arbitrator.