national arbitration forum

DECISION

Orion Securities v. Evan Samuel Brown a/k/a Evan Brown

Claim Number:  FA0411000371729

PARTIES

Complainant is Orion Securities (“Complainant”), 181 Bay St., BCE Place, Suite 3100, P.O. Box 830, Toronto, Ont. M5J 2T3, CANADA.  Respondent is Evan Samuel Brown a/k/a Evan Brown (“Respondent”), 321 Adams St. #6, Hoboken, NJ 07030.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <orionsecurities.com>, registered with Register.com.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 1, 2004.

On November 30, 2004, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name <orionsecurities.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 December 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 2004 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@orionsecurities.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On January 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <orionsecurities.com> domain name is identical to Complainant’s ORION SECURITIES mark.

2. Respondent does not have any rights or legitimate interests in the <orionsecurities.com> domain name.

3. Respondent registered and used the <orionsecurities.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Orion Securities, is a brokerage firm based in Canada.  Complainant’s areas of operation include institutional sales and trading, research, equity capital markets and proprietary trading.  Complainant focuses primarily on the oil and gas, mining, technology, healthcare and special situations sectors.  Complainant asserts that it holds “business registrations” in the United States and Canada.  Complainant has merely provided evidence that the trade name is registered in Canada and has not provided any other form of evidence that Complainant has rights in the ORION SECURITIES mark.

Respondent registered the <orionsecurities.com> domain name on May 8, 2002.  Respondent has made no use of the domain name since registration.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Prior to any determination of similairity between Complainant’s mark and Respondent’s domain name, Complainant first must show that it has rights in the ORION SECURITIES mark.  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”); see also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible, and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name).

Complainant has failed to meet this burden.  The mere fact that Complainant is registered to do business in the United States and Canada under the ORION SECURITIES trade name, is not enough to show that the ORION SECURITIES mark has gained secondary meaning.  Moreover, Complainant did not provide evidence that the mark is registered with a trademark authority.  Therefore, Complainant has failed to establish that it has rights in the ORION SECURITIES mark.  See Navigo Energy Inc. v. Meier, FA 206312 (Nat. Arb. Forum Dec. 6, 2003) ("While a trade name can function as a trademark or service mark based on the context of its use, there is no evidence of such use here. The Policy was intended solely to protect registered and unregistered trademarks and not trade names because trade names are not universally protected as are trademarks. Therefore, without any evidence of secondary meaning associated with Complainant's former name, the Panel finds that its use of Ventus Energy as a trade name does not establish rights pursuant to Policy ¶ 4(a)(i)."); see also Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its "rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks."); see also Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (finding that Complainant's use of a trade name, without any showing of secondary meaning associated with the name, was an insufficient demonstration that Complainant ' had rights' under the Policy).

Since Complainant failed to establish standing pursuant to paragraph 4(a)(i) of the Policy, it is unnecessary to address paragraphs 4(a)(ii) and (iii) of the Policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Ricom, Inc. v. Ricom, FA 348012 (Nat. Arb. Forum Dec. 16, 2004) (finding that failure to establish one element of the Policy deems it unnecessary for the Panel to address any other element).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

John J. Upchurch, Panelist

Dated:  January 19, 2005

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