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Credit Counselling Society of British Columbia v. Solutions Credit Counselling Service Inc. , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00031 - by Eric Macramalla

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Domain Name: nomoredebts.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: Edward Chiasson, Q.C., Roger Kerans, and David Wotherspoon

The Complainant was a non-profit organization in British Columbia, providing debt reduction services and credit education. One of its former employees was the President of the Registrant, a competing corporation that provided similar services, also in British Columbia. The Complainant asserted common law trade-mark rights in the mark NO MORE DEBTS.

In a very brief judgement, the Panel considered confusing similarity, bad faith registration and legitimate interest of the Registrant.

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a Panel will order a disputed domain name transferred to a Complainant provided it can establish that the disputed domain name is confusingly similar to a mark in which it had rights, that the Registrant has no legitimate interest in the domain name and that the name was registered in bad faith.

As the Complainant was not a registered owner of the trade-mark NO MORE DEBTS, it was required to establish use of the mark prior to the date of domain name registration. The Panel noted that the threshold for establishing use was very low and it is not necessary to show that a mark has acquired distinctiveness, provided the mark was used for the purpose of distinguishing the Complainant's wares or services from those of others. Here, the Complainant's rights in the mark were based on use in a telephone directory, newspaper, television and radio advertisements, prior to the date of domain name registration. Confusing similarity was then easily established as the disputed domain name was identical to the Complainant's mark.

With respect to bad faith registration, the Complainant pointed out that the President of the Registrant was a former employee of the Complainant and that the two parties were competitors. From this, the Panel inferred that the Registrant would have been aware of the Complainant's mark and registered the corresponding domain name to attract the business of its competitor. It is well established under paragraph 3.7(c) of CDRP, registration of a dot-ca name incorporating a competitor's mark constitutes bad faith registration.

The Panel then considered whether the Registrant had a legitimate interest in the disputed domain name. As the Registrant did not adduce any evidence to suggest it had any legitimate interest, the Panel drew a negative inference and held that it had none.

Accordingly, the Panel ordered nomoredebts.ca transferred to the Complainant.

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