Buydomains.com, just beat back a UDRP on the domain name solanum.com

Here are the relevant facts and finding from the three member panel:

“The Complainant is a Mexican individual who founded a business named Solanum Laboratories in Mexico in 2003.”

“The Complainant is the owner of a variety of Mexican registered trademarks for the word mark SOLANUM, the earliest registered of which is trademark number 901,941 registered on September 28, 2005”

“At the date of this Decision, the website associated with the disputed domain name consisted of a parking page which stated that the disputed domain name was for sale and provided hyperlinks described as “related searches” including “Resveratrol Juice”, “Colageno msm”, “Energy”, “Fusion” and “Best Resveratrol Brand”.”

“In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent is not known by the name “Solanum”; the Respondent neither has the Complainant’s authorization nor the Complainant’s license or franchise to use the disputed domain name; and there is no relation between the Respondent’s name and the disputed domain name from which any right or legitimate interest can be inferred. The burden of production accordingly shifts to the Respondent.”

“The Respondent’s submissions focus squarely on the fact that it was making a bona fide offering of goods or services at the disputed domain name (within the meaning of paragraph 4(c)(i) of the Policy) via pay-per-click parking directly related to the generic nature and definition of the word which comprises the disputed domain name, namely “solanum”, a genus of plants. ”

“In the present case, the Respondent provides a sworn statement averring that it is a professional domainer which regularly engages in the business of using domain names to display advertising links.”

“It also provides evidence demonstrating that the disputed domain name is a dictionary word. ”

“Furthermore, there is neither any evidence that the disputed domain name is identical or confusingly similar to a famous or distinctive trademark nor that the Respondent had actual knowledge of the Complainant’s mark when it registered the disputed domain name. ”

“The Panel notes in addition that the advertising configured by the Respondent to appear on the website associated with the disputed domain name (at least when viewed from the Respondent’s jurisdiction) is related to the dictionary meaning of the word “solanum”, namely the relevant plants or extracts derived from them, and does not appear to relate to the trademark value of the Complainant’s SOLANUM trademark.”

“In the circumstances of the present case, given that the Respondent was seeking to register a dictionary word, albeit by automated means, the Panel considers that the Respondent’s actions can be considered to be sufficient good faith efforts to avoid the registration and use of a domain name that was identical to a mark held by another. ”

“This does not mean that the Panel considers that such efforts as were made in the present case would necessarily be deemed sufficient in every case involving the Respondent or similar professional domainers.”

“Each such case will require to be considered on its own merits and in particular within the context of the domain name and trademark concerned, and the relative searches or other actions undertaken at the time of registration.”

“In all of the above circumstances, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have not been satisfied.”

“It is evident to the Panel that the word “solanum”, is a botanical genus of plants and thus a dictionary word which can be demonstrated to be in widespread usage on the Internet. ”

“Furthermore, it could not be said to be exclusively associated with the Complainant, its business or its trademarks.”

“Absent such exclusivity, there is no evidence that the word “solanum” is strongly or even substantively associated with the Complainant’s trademark in the jurisdiction where the Respondent is based, namely the U.S. While the Complainant has recently registered a trademark in that jurisdiction, this was not in force when the Respondent registered the disputed domain name. The Respondent has, in its sworn statement, explained to the satisfaction of the Panel how and why it registered the disputed domain name and, most importantly, has insisted that it was unaware of the Complainant and did not have the Complainant’s Mexican trademarks in mind at the time when it registered the disputed domain name. The Complainant has placed no evidence before the Panel demonstrating or indicating that it is more probable than not that the Respondent had any such knowledge.”

“The Complainant focuses in particular on the fact that the Respondent has offered the disputed domain name for sale at a price in excess of its out of pocket costs associated with the registration of the domain name.”

“The Panel takes the view that the Respondent’s offering of the disputed domain name for sale in the present case does not constitute evidence of bad faith registration or use, given that the Respondent has put forward an entirely plausible explanation for its registration of the disputed domain name and there is no evidence before the Panel to indicate that the Respondent was targeting either the Complainant or its SOLANUM trademark thereby.”

“There being no other circumstances indicating registration and use in bad faith, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied.”