Dreams Usa, Inc. v Charbel Bulos, Sonny Angel Store Mexico

WIPO Case No. D2025-0936

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dreams USA, Inc. v. Charbel Bulos, Sonny Angel Store Mexico

Case No. D2025-0936

1. The Parties

The Complainant is Dreams USA, Inc., United States of America (“United States”), represented by Hinckley,

Allen & Snyder, LLP, United States.

The Respondent is Charbel Bulos, Sonny Angel Store Mexico, Mexico.

2. The Domain Name and Registrar

The disputed domain name <sonnyangelmex.com> is registered with Tucows Domains Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2025.
On March 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 7, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Contact Privacy Inc. Customer 0170254428) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 10,
2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the

Complaint on March 10, 2025.

The Center verified that the Complaint together with the amendment to the 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 March 11, 2025. In accordance with the Rules, paragraph
5, the due date for Response was March 31, 2025. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 1, 2025.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on April 9, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

page 2

Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is the exclusive North and South American distributor of limited-edition art toys, giftware, and lifestyle accessories created by parent company Dreams Inc. (Japan). Among its most popular items there are collectible figures called SONNY ANGEL dolls.

SONNY ANGEL dolls - tiny PVC figures representing a fictitious two-year-old cherub - have existed for twenty years, and have reached new heights of popularity in the United States recently, as evidenced by a New York Times article published in April 2023 describing a growing obsession among working women in their mid-20s with collecting the dolls, and a “Vox.com” article published in July 2024 chronicling the explosion in their popularity, as demonstrated with the evidence attached to the Complaint.

To protect the substantial goodwill associated with the SONNY ANGEL brand, the Complainant owns United States Trademark Registration No. 6,663,607 for the word mark SONNY ANGEL for PVC toy figures. This trademark, filed on March 10, 2021, and registered on March 8, 2022, is valid and subsisting, with a first use in commerce date of January 1, 2004.

The disputed domain name contains the SONNY ANGEL Mark in its entirety, in combination with the geographic identifier “mex” for Mexico, paralleling the geographic identifier “usa” used in the Complainant’s own domain name for promoting SONNY ANGEL dolls, <sonnyangelusa.com>.

The Respondent registered the disputed domain name on February 16, 2024, fully two decades after the
Complainant’s SONNY ANGEL mark was first used in commerce.

The disputed domain name resolves to a web page on which products including unauthorized and likely counterfeit or gray market “Sonny Angel” dolls are offered for sale. At the end of the web page there is disclaimer stating “© 2025, Sonny Angel Store Mexico Distribuidor de Artículos Dreams,Inc, no afiliado”. A

true and correct copy of printouts of the web page at the disputed domain name, in the original Spanish and

translated to English, was attached as Annex F of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name includes the earlier trademark SONNY
ANGEL Mark in its entirety, and it is only different of the trademark by the addition of the word “mex”. Adding
geographic terms to a trademark in a domain name is not sufficient to avoid misleading Internet users and to
avoid creating a likelihood of confusion. The disputed domain name contains the SONNY ANGEL Mark, in
combination with the geographic identifier “mex” for Mexico, paralleling the geographic identifier “usa” used
in the Complainant’s own domain name for promoting SONNY ANGEL dolls, <sonnyangelusa.com>. Neither
“mex” nor the generic Top-Level Domain “.com” serves to distinguish the disputed domain name from the

SONNY ANGEL Mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

page 3

6. Discussion and Findings

A. Identical or Confusingly Similar

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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “mex”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Complainant has provided evidence that the website linked to the disputed domain name has been created to give an impression of being a website of or associated with the Complainant. Noting the composition of the disputed domain name and the website content, the Panel finds that the disclaimer at the very end of the website is not prominent and clear enough to dispel the confusion.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

page 4

In the present case, the Panel notes that the Respondent’s website mimics the look and feel of the impression created by incorporating the SONNY ANGEL mark as the dominant feature of the disputed domain name. Further, in addition to featuring photographs of the Complainant’s products throughout, the Respondent’s website employs the same dark pink color scheme as Complainant’s website, even displaying the heading, “Sonny Angel Store Mexico,” in a font and color nearly identical to those of the “Sonny Angel Store” heading on Complainant’s website.

Furthermore, the Respondent is using a domain name that incorporates the SONNY ANGEL mark in its entirety to redirect and mislead consumers into thinking that products featured on the resulting pages are authorized SONNY ANGEL products and/or that the disputed domain name is sponsored or endorsed by the trademark owner: the Complainant. UDRP panels have repeatedly held that such use is not a bona fide offering of goods or services; or a legitimate noncommercial or fair use.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Having reviewed the record, the Panel notes the fact that the Complainant’s trademark registrations predate the registration date of the disputed domain name, the composition of the disputed domain name and the impersonating use and finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sonnyangelmex.com> be transferred to the Complainant

/Rodrigo Velasco Santelices/
Rodrigo Velasco Santelices
Sole Panelist
Date: April 22, 2025.