WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BTSA Biotecnologias Aplicadas, S.L. v. Gregg Freeman, Domain Capital and Macrosten Ltd. Case No. D2018-1726 1. The Parties

The Complainant is BTSA Biotecnologias Aplicadas, S.L. of Madrid, Spain, represented by Whiteford, Taylor & Preston, LLP, United States of America (“United States”).

The Respondents are Gregg Freeman, Domain Capital of Englewood, New Jersey, United States and Macrosten Ltd of Nicosia, Cyprus, represented by WEBLEGAL, Italy. 2. The Domain Name and Registrar

The disputed domain name is registered with Epik, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2018. On July 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In reply to a request for clarification sent by the Center, the Complainant filed an amended Complaint on August 8, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2018. The Response was filed with the Center on August 30, 2018. The Complainant sent an email communication to the Center on September 6, 2018. The Respondent sent two email communications to the Center on September 6 and 7, 2018.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 13, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 14, 2018, the Complainant filed a supplemental filing in reply to the Response. On September 20, 2018, the Respondents filed a supplemental filing in response to the Complainant’s supplemental filing. 4. Factual Background

The Complainant was established in 1994 in Spain. It produces and markets a range of chemical products including natural antioxidants, natural vitamin E and Omega 3 for food, cosmetics and personal care, nutraceuticals, pharmaceutical and animal nutrition. Its main product, marketed under the trademark “Tocobiol” is (according to the Complaint) a powerful antioxidant used in the food industry since 1995 and subsequently in the cosmetics industry.

The Complainant says it has customers in over 30 countries. In the Complaint, the Complainant makes a point that it has sales offices in Mexico. In May 2018, the Complainant established a subsidiary in the United States.

Since it began operations, the Complainant says it has marketed and sold its products by reference to a figurative mark which includes as the most prominent element the letters “btsa”. The Complaint includes evidence demonstrating use of that mark on brochures, corporate stationery and the like.

According to the Complaint, the Complainant spent about EUR 90,000 each year on marketing and promotion of the trademark until the last three years. In the last three years, the annual expenditure has been around EUR 300,000.

The Complainant established its website at in mid-2004. The Complainant has provided evidence that, since November 2015, there have been 228,492 visitors to its website. Apparently, 85 per cent are “new visitors”, the remaining 15 per cent are returning visitors. The Complainant began “investing” in Google AdWords in 2016. Since then, for an expenditure of EUR 39,000, it has gained some 26 million impressions resulting in 137,568 clicks through to its site, the number of “clicks” increasing each year.

The figures from Google Analytics included in the Complaint appear to indicate that there were less than 1,000 visitors per month to the Complainant’s website in the first half of 2016. From July 2016 to late 2017, the number of visitors ranged between 6,000 – 10,000 per month. From late 2017, the number of visitors has increased to over 15,000 per month.

The Complainant has also spent some EUR10,000 on LinkedIn Ads since January 2017, resulting in over seven million impressions and almost 5,000 “clicks”.

The Complainant has attended numerous trade shows. Until 2010, this was as a visitor or attendee. From 2010 onwards, it has been an exhibitor.

The Complainant’s founder has secured registration of a version of the figurative mark as an International Registration of Trademark No. 1319111 BTSA BIOTECNOLOGÍAS APLICADAS for a range of relevant products in International Class 1. The registration was effected on May 26, 2016. On that date, the Complainant’s founder also filed to register the figurative trademark in the United States, Trademark No. 5,298,748 BTSA BIOTECNOLOGÍAS APLICADAS. That trademark was registered in the United States on October 3, 2017.

The disputed domain name was registered in July 2003. According to the Complaint, at least on December 10, 2004 it was registered to Macrosten Ltd (the “Second Respondent”), or that company’s principal, Michele Dinoia. Over time, the Second Respondent has also registered numerous other three letter and four letter domain names. It says that its business model is “to invest” in what it calls “premium” domain names, by which it appears to be referring to plain words and very short domain names such as two, three or four letter domain names. Neither the Response nor the Respondents’ supplemental filing expose how the Second Respondent identified and obtained these domain names.

In about October 2014, the registration of the disputed domain name (along with the registrations of numerous other “premium” domain names) was transferred to the first named Respondent, Gregg Freeman of Domain Capital. According to the Respondents, this is a sale and lease back arrangement whereby the First Respondent has provided substantial funding to the Second Respondent on the security of the “leased” domain names. In February 2017, there was some sort of renegotiation or extension of this arrangement.

At all times since its registration, the registrant has consistently offered it up for sale. For most of that time, the disputed domain name appears to have been inactive (apart, more recently, for a link to “inquire about this domain”). At some point after June, 2016 and before the filing of the Complaint, the disputed domain name has begun resolving to a website with pay-per-click (PPC) links to job or employment searches. 5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and

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

Paragraph 15(a) of the Rules directs the panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

In the interests of ensuring that both parties are properly heard, the Panel admits both supplemental filings into the record in this proceeding. A. Preliminary Issue: The Respondent’s identity

Paragraph 1 of the Rules defines the “respondent” for the purposes of a complaint under the Policy as:

“the holder of [the] domain-name registration against which [the] complaint is initiated.”

In the present case, that is the First Respondent. The Respondents contend, however, that the First Respondent’s registration is a mere formality to secure the moneys advanced by way of “lease back” to the Second Respondent (the disputed domain name is only one of a portfolio of domain names provided as security for the moneys lent.). The Respondents say that the disputed domain name and the use made of it at all times remains under the control and responsibility of the Second Respondent. The First Respondent will assert actual control only if the Second Respondent defaults on repayment under the sale and lease back arrangement.

The Respondents, however, present themselves as independent third parties dealing with each other at arm’s length. They appear to have a longstanding relationship going back to at least 2014, but it is a commercial relationship of borrower and financier. It is not a familial relationship nor are they members of the same corporate group.

The Respondents have also chosen not to disclose the terms of their relationship in full. So the precise arrangements between them are not clear. What is clear, however, is that the First Respondent has advanced what is apparently a very substantial sum to the Second Respondent on the strength, at least partly, of the security over the disputed domain name. The Panel recognises that the disputed domain name is one of only a portfolio of names which are subject to this arrangement. However, the Respondents rejected an offer of USD 15,000 for the disputed domain name as too low. In other evidence, the Respondents also claim that the “average value” of four letter domain names is USD 75,000.

Although the precise terms of the relationship have not been disclosed, the Panel would expect that someone advancing substantial sums on the strength of the security over the domain names would include covenants to protect the subsistence of the security. That is, the financier typically imposes obligations to preserve the value of the security and retains power to step in to preserve the subject matter of the security. The Panel also notes that there does in fact appear to have been a significant change in how the disputed domain name has been used around the time the Respondents engaged in a second sale and lease back arrangement in February 2018. As noted above, at some point after September 2017 (so far as can be ascertained from records maintained by the Wayback Machine) the disputed domain name began resolving to a website with PPC advertising links.

In these circumstances, the Panel does not consider it appropriate to classify the stated ownership arrangement as a mere formality like transfers between members of the same corporate group or family. The stated ownership arrangement was effected to generate commercial value for both parties from the disputed domain name as a domain name, rather than a mere adminis