Full Life, LLC v. Devon Brooks / Stellar Guidance Technologies INC
Claim Number: FA2104001940085
Complainant is Full Life, LLC (“Complainant”), represented by Jeremy Kriegel of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Devon Brooks / Stellar Guidance Technologies INC. (“Respondent”), represented by Roger A.C. Kuypers of Fasken Martineau DuMoulin LLP, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sphereishere.com>, <sphere.guide>, <sphere.coach>, <sphereforteams.com> and <sphereishere.app> (“the Domain Names”), registered with Google LLC and Webnames.ca Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2021. The Forum received payment on April 2, 2021.
On April 4, 2021 Google LLC confirmed by e-mail to the Forum that the <sphere.guide>, <sphere.coach>, <sphereforteams.com> and <sphereishere.app> domain names are registered with Google LLC and that Respondent is the current registrant of the names. On April 6, 2021, Webnames.ca Inc. confirmed by e-mail to the Forum that the <sphereishere.com> domain name is registered with Webnames.ca Inc. and that Respondent is the current registrant of the name. Google LLC and Webnames.ca Inc. have verified that Respondent is bound by the Google LLC and Webnames.ca Inc. registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sphereishere.com, postmaster@sphere.guide, postmaster@sphere.coach, postmaster@sphereforteams.com and postmaster@sphereishere.app. Also on April 14, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 10, 2021.
On May 17, 2021, Complainant filed an Additional Submission.
On May 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant offers coaching services for healthcare executives, physicians, and leaders or individuals from all industries. Complainant has rights in the SPHERES and SPHERES OF LIFE marks through registration of the marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <sphereishere.com>, <sphere.guide>, <sphere.coach>, <sphereforteams.com> and <sphereishere.app> domain names are confusingly similar to Complainant’s marks as Respondent removes the letter “s” in all the Domain Names, adds generic terms to some of the Domain Names and attaches the “.com”, “.guide”, “.app” and “.coach” generic top-level domains (“gTLDs”).
Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to compete with Complainant’s coaching service.
Respondent registered and uses the Domain Names in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain and disrupt Complainant’s business by offering competing services. Furthermore, Respondent had actual or constructive knowledge of Complainant’s SPHERES mark at the time of registration.
B. Respondent
Respondent, Devon Brooks, is the principal of Devs Development Inc., a holding company for assets and intellectual property used in the business of Stellar Guidance Technologies Inc., doing business as Sphere. Ms. Brooks is the founder, director, and majority shareholder of Stellar Guidance Technologies Inc.
Respondent provides a range of career, leadership, business, relationship, life, wellbeing, executive, and performance personal coaching services. Respondent has rights in the SPHERE mark through registration of the mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA1050620, registered August 21, 2019). The Domain Names form part of Respondent’s online community platform through which it offers services under the SPHERE Mark. The Domain Names are not confusingly similar to Complainant’s SPHERES or SPHERES OF LIFE marks, as they do not contain the word “spheres” and have additional words connected to them that provide context to Internet users.
Respondent has rights and legitimate interests in the Domain Names. Respondent is commonly known by the Domain Names because Respondent is doing business under the Domain Names. Each of the Domain Names serves a purpose in supporting Respondent’s coaching business under Respondent’s SPHERE mark. Respondent was not aware of Complainant’s existence or commercial activities at any material time, despite having conducted online searches of the word “Sphere” in order to ensure that no prior conflicting rights existed. Dr. Siegler, on behalf of Complainant, wrote to Ms. Brooks on December 23, 2019, which long post-dates the creation of the Respondent’s business, the launch of the prototype, the beta application, and the final application, the registration of the bulk of the Domain Names and the registration of the SPHERE Mark in Canada.
Respondent did not register and use the Domain Names in bad faith. Respondent did not register the Domain Names to disrupt Complainant’s business but to conduct business using its protected SPHERE mark in a bona fide manner. Respondent had no knowledge of Complainant’s business at the time of developing its business model, and believes Internet users are sophisticated enough to understand the differences between the two parties and their services.
More than a year passed following Dr. Siegler’s communication to Ms. Brooks on December 23, 2019 but there was no further contact until the Complaint was initiated.
C. Complainant’s Additional Submission
Complainant submits the Response contains misrepresentations regarding delay on the part of Complainant in asserting its rights and that those misrepresentations should be disregarded.
Complainant has failed to establish all the elements entitling it to relief.
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."
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.
Complainant has shown that it has rights in the SPHERES mark through registration of the mark with the USPTO, Reg. No. 4,108,596, registered on March 6, 2012, upon application filed on July 21, 2011 in International Class 41 for “Business education and training services, namely, developing, and facilitating customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders”.
Complainant has also shown that it has rights in the SPHERES OF LIFE mark through registration of the mark with the USPTO, Reg. No. 2,493,505, registered on September 25, 2001 upon application filed on January 13, 2000 in International Class 35 for “Retail store services, available through retail establishments, books, pamphlets, and audio tapes, which provide information to assist individuals in setting life goals, and in designing and implementing methodologies to realize their life goals”.
Complainant also owns the domain name <spherescoaching.com>, which
Complainant registered on May 25, 2012.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), paragraph 1.7:
“What is the test for identity or confusing similarity under the first element?
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Applying a side-by-side comparison, the Panel finds each of Respondent’s <sphereishere.com>, <sphere.guide>, <sphere.coach>, <sphereforteams.com> and <sphereishere.app> domain names to be confusingly similar to Complainant’s SPHERES mark as the word “sphere” is the dominant part of the mark. The absence of the letter “s” and the presence of generic terms in some of the Domain Names do not sufficiently distinguish the Domain Names from the mark. The “.com”, “.guide”, “.app” and “.coach” gTLDs are inconsequential when considering this element and may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Names for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Names were registered several years after Complainant’s United States registrations in 2001 and 2012 respectively of its SPHERES OF LIFE and SPHERES marks, as follows:
<sphereishere.com> December 28, 2016
<sphere.guide> August 31, 2018
<sphereishere.app> October 18, 2018
<sphere.coach> July 15, 2019
<sphereforteams.com> January 16, 2020.
The <sphere.coach> and <sphere.guide> domain names resolve to a website offering leadership and coaching services of the kind offered by Complainant. The <sphereishere.com> and <sphereishere.app> domain names redirect to the <sphere.guide> website. The <sphereforteams.com> domain name resolves to a login prompt for “Sphere Teams.”
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that she does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
Respondent asserts that in late 2016 and early 2017, Respondent began seeking investment funding, developing a business plan and conducting early promotional activities. Through 2017 Respondent built the prototype of its application, and ran tests with the public, which launched in beta version in around summer 2018, culminating in its wider release.
In support of these assertions Respondent has provided evidence that Respondent was preparing in early 2017 to commence business under the name Sphere, having registered the domain name <sphereishere.com> in late December, 2016. A document sent on February 17, 2017 from DevBBQ Inc. to Respondent entitled “Sphere / DevBBQ Inc. Statement of Work Sphere Preheat/Discovery” stated:
“Devon Brooks (Sphere) has requested DevBBQ to provide a full Discovery and Pre-Heat session that will focus on extracting and formalizing requirements to build the Sphere platform.”
On March 31, 2017 a draft application to register the mark SPHERE in Canada was produced for Respondent. The application was filed with the Canadian Intellectual Property Office (“CIPO”), on April 10, 2017 and the mark obtained registration in the name of Respondent’s company, Devs Development Inc, on August 21, 2019 for a range of personal, lifestyle, health, and wellness coaching and development services in International Class 41, claiming use in Canada since at least as early as December 1, 2016.
Respondent has provided copies of receipts displaying the SPHERE mark sent from Stellar Guidance Technologies, Inc. to customers, dated between November 7, 2018 and April 26, 2021 for “Sphere session”.
On October 5, 2017, Dev Development applied to register the mark SPHERE in the United States with the USPTO. The application was refused on May 2, 2018 due to a likelihood of confusion with Complainant’s SPHERES OF LIFE mark and was also refused on October 16, 2018 due to a likelihood of confusion with Complainant’s SPHERES mark. The Panel proceeds on the basis that Respondent became aware of these marks upon those refusals being received.
Complainant first contacted Respondent on December 23, 2019 and sent a formal cease and desist letter on August 21, 2020. The Response does not mention that there was correspondence between the representatives of the parties between these dates but the Panel does not consider that this affects the outcome of this proceeding.
Taking all the evidence into account, including references in the media to Complainant and its marks since their registration and screenshots of Complainant’s website at “www.spherescoaching.com”, the Panel is not persuaded that Respondent was aware of Complainant or its marks when she commenced preparations to launch her business using the “Sphere” name. By the time she did become so aware, at the earliest on May 2, 2018, when the USPTO rejected the application to register the SPHERE mark in the United States, her business was about to launch. By the time she was first notified of this dispute, at the earliest upon receipt of Complainant’s communication on December 23, 2019, four of the five Domain Names had been registered in furtherance of that business. The registration of the domain name <sphereforteams.com> on January 16, 2020 is consistent with use of the Canadian registered SPHERE mark in that business.
Respondent has thus shown that, before any notice to Respondent of the dispute, Respondent used and continues to use the Domain Names in connection with a bona fide offering of services. Accordingly, the Panel finds that Respondent has rights to or legitimate interests in the Domain Names, pursuant to 4(c)(i) of the Policy.
Complainant has failed to establish this element.
In light of the Panel’s finding in relation to the second element, it is unnecessary to consider this element.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sphereishere.com>, <sphere.guide>, <sphere.coach>, <sphereforteams.com> and <sphereishere.app> domain names REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: May 24, 2021
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