The Complainant is Observe, Inc., United States of America (“United States”), represented by Cooley LLP, United States.
The Respondent is Anaklaudia Filadoro, Domain Leasing Ltd. / Domain Leasing Limited, Malta, represented by Morrison & Foerster, LLP, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name On August 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which confirmed the registrant of the disputed domain name was the second-named Respondent and contact information in the Complaint.
The Center verified that the Complaint 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Response was filed with the Center on September 23, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 4, 2021. 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 October 14, 2021, the Center received an unsolicited supplemental filing from the Complainant.
4. Factual BackgroundThe Complainant is a provider of software-as-a-service (“SaaS") and information technology services for data visualization and analysis. It started its business under the name “Observe” at some point between September 2017 and January 2018.1
The Complainant is the registrant of the domain name
A print out of the, or a page of, the June 2018 update shows “Observe TM” adjacent to a fairly simple device, a heading “Observe is your complete solution for monitoring and analyzing machine data.” above a brief description of the services and after some thumbnail descriptions of the service’s functionality and the logos of some multinational companies which are said to be “more productive with observability” a footer which includes the copyright notice “© 2018 Observe Inc. All rights reserved.” and provides a contact email address, support@observeinc.com.
The version of the website captured by the Wayback Machine at “www.archive.org” on August 7, 2018 appears to show only a single page “Observe We find meaning in your data”. As captured by the Wayback page, the landing page did not include any other content, clickable links, or copyright notice or contact information.
According to the Complainant, the email headers for its communications prominently displayed the “Observe” trademark. In May 2018, the Complainant shared a strategy document with potential clients. The document was headed “Observe’s USD10B Pitch” and refers in a number of places to a first product “Observe Dev|Ops”.
In the last 12 months, the Complainant has spent over USD 250,000 promoting its services under the “Observe” trademark to “thousands of people in person and online”. At the Snowflake Summit in 2020, “an online event reaching over 50,000 people,” the Complainant was awarded “Snowflake Data Application of the Year”. The Complainant has also appeared on “theCube”, a livestreaming service covering tech companies, to discuss events such as AWS re:Invent. The Complainant has also “has spent over USD 100,000 promoting various content on social media platforms such as LinkedIn and Reddit.”
The Complaint indicates that the disputed domain name has been held by various entities since 2006.
According to the Response, the disputed domain name was held by Agile Wings Limited, a Hong Kong, China company from 2013 until July 2018.
At least on July 26, July 30, and August 10, 2013, the Wayback Machine at “www.archive.org” archived captures of the website at the disputed domain name in which Agile Wings was providing a log-in to its OLogger platform and HTML programming scripts for users to track website usage. Although the Wayback Machine tools crawled the disputed domain name numerous times after that date, from February 2014 until January this year, the pages captured by the Wayback Machine merely displayed a message:
“Heroku | No such app.
“There is no app configured at that hostname.
“Perhaps the app owner has renamed it, or you mistyped the URL.”
In October 2017, a Mr. De Backer became the sole director and shareholder of Angel Wings pursuant, he says, to a transaction entered into in August 2017.
Agile Wings also has a website at “www.agilewings.com”. It is currently a single page with a description of services which the company says it provides for agile development projects. The webpage displays a physical address for the company. It does not include any electronic or telephonic contacts and does not feature any clickable links. The Panel’s searches on the Wayback Machine show that this has been the form of the website since at least 2015 (before Mr. De Backer became the sole director and shareholder) save that the date in the copyright notice changed.
In January 2018, Mr. De Backer also became the sole director of the Respondent, Domain Name Leasing Limited.
According to Mr. De Bakker, in July 2018 he caused Agile Wings to transfer the disputed domain name to the Respondent, Domain Name Leasing Limited.2
In September 2018, Mr. De Backer caused the Respondent to pay the renewal fees for the registration of the disputed domain name.
In November 2020, according to the Response, the Respondent entered into an agreement with an unnamed software development company to license the disputed domain name and “Observe” trademark in connection with a technology using deep machine learning.
In January 2021, the disputed domain name began resolving to a website. The website consists of a single page. It is headed “Observe” (where the “O” is depicted as a magnifying glass). It then has the tag lines:
“Analyze. Understand. Act.
“Unleash the true power of data.”
Then follows three paragraphs, the first of which declares:
“OBSERVE is a platform which facilitates the analysis of large number of digital data sources using the computing and storage facilities of the cloud.” © Copyright 2021, Observe. All rights reserved. Contact us: info@observe.com”.
On February 12, 2021, the Respondent applied to register OBSERVE as a trademark in the United States in respect of software services in International Class 42 including Software as a service (SaaS) services featuring software for facilitating the analysis of large numbers of digital data sources using the computing and storage facilities of the cloud. The application has not proceeded to registration at this time. It claims a first use in commerce on October 11, 1997.
5. Discussion and FindingsParagraph 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.
A. Admissibility of Complainant’s Supplemental FilingApart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
The Complainant has submitted its supplemental filing very late in the proceeding – almost three weeks after the Response was filed and only four days before the Panel was due to submit his decision. No explanation for that delay has been offered. The delay and lack of explanation would be a basis for rejecting the supplemental filing.
Further, a significant part of the proposed supplemental filing is directed to providing evidence about the Complainant’s use of the name “Observe” in and since November 2017. In a case where the Complainant is relying on its rights in an unregistered trademark that information strictly speaking should have been submitted in the Complaint.
The Response does, however, advance information about the history of the disputed domain name and the Respondent’s relationship with the former holder, Agile Wings, which could not realistically have been known to the Complainant. In these circumstances but with considerable reservations, the Panel is prepared to admit those parts of the Complainant’s unsolicited supplemental filing into the record in the proceeding.
In the circumstances of this case, however, it is not necessary to ascertain the Respondent’s views about the proposed supplemental filing or provide the Respondent with an opportunity to respond.
Accordingly, the Panel admits the Complainant’s Supplemental Filing into the record.
B. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant does not have a registered trademark and instead claims rights in the term “Observe” as an unregistered or common law trademark.
Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) notes that a complainant asserting rights in an unregistered or common law trademark must show that the mark has become a distinctive identifier by which the relevant public identifies the trade source of the relevant goods or services as being the complainant.3 Section 1.3 of WIPO Overview 3.0 notes that:
“Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”.
“(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)”
The Respondent contends that the Complainant’s evidence does not satisfy this requirement as at the date when it renewed the disputed domain name in September 2018. There are two problems with this contention.
First, it is necessary for the Complainant to show only that it has rights in a trademark at the time it filed the Complaint. Where questions arise from the registration of the disputed domain name before the date of the Complainant’s trademark rights, those issues are better dealt with under the second and third requirements going to rights and legitimate interests and bad faith. See e.g., WIPO Overview 3.0, sections 1.1.3 and 3.8.
Secondly, as discussed below, generally the date the Respondent’s claimed bad faith or otherwise is tested is the date the disputed domain name was acquired by the Respondent, not the date the renewal was effected. See e.g., WIPO Overview 3.0, section 3.9. In the present case, that does not appear to make much (if any) difference as there are only two or three months between the asserted dates of acquisition and renewal.
The word “observe” is arguably not directly descriptive of the Complainant’s services. It does have, however, considerable aptness when used in relation to such a service. While not wholly descriptive, it appears to be closer to the descriptive end of the spectrum than to an invented or complete arbitrary term. This issue is discussed in WIPO Overview 3.0, section 2.10 in the context of a respondent’s claim to rights or legitimate interests in dictionary term.
When unregistered or common law rights are claimed in an ordinary English word such as “observe”, a considerable degree of caution is required before concluding that the term has become distinctive of the claimant. One issue is what trademark has been used. Another is the manner of use – has it been used in a way which the relevant public would understand that it is being used as a trademark, a badge of trade origin. A further issue is the extent of the claimed use.
In the present case, the Complainant has provided evidence of some limited use of the term “Observe” as a trademark alone. For example, some of the use on the website and in the strategy document. While it is claimed that “Observe” was used in the email headers, examples of that use are not in evidence. Rather, it appears that the Complainant used email addresses such as “hello@observeinc.com”.
There is no evidence of sales revenues, the numbers of clients or potential clients contacted, the distribution volume of the strategy document, the traffic to its website, or other such matters.
The Complaint does indicate that the Complainant appears to have increased its promotional activities significantly in the last 12 months and has also been involved in, or presented, at what appear to be significant trade shows. There is, however, no detail about the program of the trade shows: for example, whether the 50,000 people reached by the Snowflake Summit in 2020 was the audience for a ceremony in which the Complainant received its award or over the extent of some larger, longer program. How the Complainant’s trademark appeared in these uses is not in evidence.
The Panel appreciates that the Complainant’s claims to have a well-known and established reputation in its field are advanced under cover of two declarations made by Mr. Burton. The claims, however, are broad conclusions which could well be correct but derive from primary facts which have not been disclosed.
The Panel has considered whether the Complainant should be invited to submit a supplemental filing addressing these matters. In the end, the Panel considers that would not be appropriate. First, the Complainant has already taken the opportunity to submit an unsolicited supplemental filing to address the Respondent’s criticisms.
Secondly, even accepting that the Complainant does have the reputation in the “Observe” trademark it claims, the Complaint must fail for the reasons discussed below.
C. Registered and Used in Bad FaithIn the circumstances of this case, the Panel considers it appropriate to address the requirement of registration and use in bad faith next.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The difficulty for the Complainant in the present case is that the disputed domain name appears to have been held by Agile Wings from 2013 until its transfer to the Respondent in July 2018. By that time, both Agile Wings and the Respondent were under common control – so far as the record in this case shows, Mr. De Backer was the sole director and in control of both.
The Complainant could not have objected successfully to the registration of the disputed domain name in Agile Wings’ name under the Policy. Whether the Complainant could have objected outside the Policy to some manner of use of the disputed domain name by Agile Wings does not arise and would depend on how and in respect of what that company used the disputed domain name for.
At the time Agile Wings transferred the disputed domain name to the Respondent, the disputed domain name was inactive. It remained inactive in the Respondent’s hands for another two years or so.
The way the Respondent has used the disputed domain name since January 2021 does appear to involve targeting the Complainant given that the identity of the claimed licensee company has not been disclosed and the claimed licence arrangements are wholly uncorroborated. In addition, as the Complainant points out, the claim made in the Respondent’s trademark application to first use in commerce in the United States in 1997 appears highly questionable.
The way the Respondent began using the disputed domain name in January 2021, however, goes directly to use in bad faith. Often the way a domain name is used can provide inferences about why it was registered. That is particularly the case where the manner of use starts soon after the registration. It may be more difficult to make that inference where, as here, there has been a significant delay between registration and the commencement of use.
Mr. De Backer does admit that he bought Agile Wings to acquire the disputed domain name because of his perception of the potential value of the disputed domain name.
The Respondent, however, has denied knowledge of the Complainant and its trademark when the disputed domain name was transferred from its related company to the Respondent and renewed. That claim is not inherently implausible or easily put aside in circumstances where:
(a) the disputed domain name consists of an ordinary English word (which may be inherently valuable in itself);
(b) the disputed domain name was already held by a related company and, on the record in this case, had been held for many years prior to the Complainant’s adoption of its trademark;
(c) at the time of the transfer, the disputed domain name was dormant and remained so for at least another two years;
(d) so far as the Complainant’s evidence shows, its business appears to have been starting up and operating in a limited way during 2018 but has significantly expanded the scope of its activities and promotion of its business in the last 12 months or so in particular;
(e) even if the Respondent had undertaken trademark searches at the time of the transfer, the searches would not have revealed any registered rights or pending trademark applications in the Complainant’s name; and
(f) the matters in (a) and (d) indicate it cannot reasonably be inferred that a Google or other Internet search would have disclosed the Complainant or, if so, how prominently.
In these circumstances, the Panel does not consider it can be inferred that the Respondent was aware of the Complainant or was targeting the Complainant’s trademark when the disputed domain name was transferred from Agile Wings to the Respondent.
Accordingly, the Panel is unable to find that the Respondent registered the disputed domain name in bad faith.
As the Complainant cannot establish the third requirement under the Policy, the Complaint must fail and no good purpose would be served by considering the second requirement under the Policy.
As the connection between the Respondent and Agile Wings is something that emerged only from the Response and bearing in mind the way the Respondent has sought to use the disputed domain name since January 2021, this is certainly not a case for reverse domain name hijacking.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: October 18, 2021
1 The Complaint states the Complainant started offering its services in November 2017. The unsolicited supplemental filing states the company was founded in September 2017 “and immediately began hiring employees, building a website, and engaging directly with potential customers.” The supplemental filing then states “As early as January 3, 2018, Observe was in meetings with prospects [potential clients] and communicating with them under the OBSERVE trademark.”
2 The Response does not disclose the role of Anaklaudia Filadoro. As the first-named Respondent is a privacy service and the Response has been filed on behalf of Domain Name Leasing Limited supported by a declaration of Mr. De Backer as the sole director of the company, the Panel will refer to Domain Name Leasing Limited as the Respondent unless it becomes necessary to distinguish the company from the other named Respondents.
3 In view of the derivation of the Policy from the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel considers it appropriate to apply the understanding of the interpretation of similar terms and concepts in the context of the Policy also.