Dreams USA, Inc. v Detodo Chile

WIPO Case No. D2025-1207

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dreams USA, Inc. v. Detodo Chile

Case No. D2025-1207

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 Detodo Chile, Chile.

2. The Domain Name and Registrar

The disputed domain name <sonnyangelchile.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2025. On March 25, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 26, 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 31, 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 April 10, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2025. The Respondent sent email communications to the Center on April 1, 2025, on April 10, 2025, on April 14, 2025, on April 25, 2025, and on May 1, 2025. Taking into account the Respondent’s email communications, the Center sent an email on April 29, 2025 to the Parties inviting the Complainant to suspend the proceeding to explore the possibility of a settlement agreement between the Parties. As no suspension request was submitted by Complainant, the Center notified the Parties on May 1, 2025, that the Center will proceed to Panel appointment.

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The Center appointed Daniel Peña as the sole panelist in this matter on May 7, 2025. 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.

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.

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 Respondent registered the disputed domain name on January 15, 2025, fully two decades after the

Complainant’s SONNY ANGEL mark was first used in commerce.

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 in its entirety, and it is only different of the trademark by the addition of

the word “Chile”. Adding geographic terms to a trademark in a domain name is not sufficient to avoid trademark.

misleading Internet users and to avoid creating a likelihood of confusion. Neither “Chile” nor the generic

The Complainant contends that there are no rights or legitimate interests held by the Respondent in respect of the disputed domain name. The Respondent is not commonly known as the disputed domain name nor does the Respondent have any authorization from the Complainant to register the disputed domain name.

The Respondent is not making a legitimate noncommercial fair use of the disputed domain name. Rather the Respondent is using the disputed domain name to create a website that sells unauthorised or counterfeit versions of the Complainant’s products and falsely asserts that it is an official website of the Complainant, such use not being bona fide.

The Complainant considers that the disputed domain name was registered and is being used in bad faith. the Respondent is clearly aware of the SONNY ANGEL trademark and is using it to deceive consumers as to its affiliation with the Complainant. Such conduct amounts to registration and use of the disputed domain name in bad faith.

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B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent sent several email communications to the Center from April 1 to May 1, 2025, mainly expressing its willingness to transfer the disputed domain name.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Considering these requirements, the Panel rules as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has provided evidence of its rights in the trademark SONNY ANGEL on the basis of its trademark registration in the United States. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected

UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1). It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of the WIPO Overview 3.0.

The Respondent’s incorporation of the Complainant’s SONNY ANGEL trademark in full in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”

domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s mark.
Mere addition of the geographical term “Chile” does not prevent a finding of confusing similarity between the
disputed domain name and the Complainant’s mark SONNY ANGEL because the Complainant’s SONNY
ANGEL trademark remains clearly recognizable in the disputed domain name. As noted in

Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which
the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph

4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the

Complainant. The Panel also finds that there is no indication that the Respondent is commonly known by the disputed domain name because the Respondent’s name is “detodo chile” which has no apparent connection with the SONNY ANGEL trademark.

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The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. Furthermore, the disputed domain name directs to a commercial website that allegedly offers the Complainant’s counterfeit products, without any disclaimer as to the relation with or authorization of the Complainant, exacerbating the user confusion as to the website’s affiliation to the Complainant. Such use for deliberately attracting Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant supports a finding that the Respondent lacks rights to or legitimate interests in the disputed domain name.

The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

The Panel concludes that the Respondent deliberately chose to include the Complainant’s SONNY ANGEL trademarks in the disputed domain name, in order to achieve commercial gain by misleading third parties, and that such use cannot be considered as a legitimate noncommercial or fair use. The Panel finds that the composition of the disputed domain name, including the term “Chile” together with the trademark SONNY ANGEL, carries a risk of implied affiliation with the Complainant.

Furthermore, the Respondent is using the disputed domain name to allegedly offer counterfeit products.
Irrespectively of whether the products on the Respondent’s website are counterfeit products or not, noting
the lack of any disclaimer, the disputed domain name’s content exacerbates the confusion caused by the
incorporation of the Complainant’s trademark in the composition of the disputed domain name and further
suggests sponsorship or endorsement by the Complainant. See sections 2.5.1 and 2.8 of the
WIPO Overview 3.0.

Given the above, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the Complainant submits that at the date of registration of the disputed domain name the Respondent would have had constructive, if not actual, knowledge of the Complainant’s mark SONNY ANGEL.

The Panel’s finding is reinforced given the construction of the disputed domain name, which combines the domain name directed to a website that allegedly offers the Complainant’s trademarked products. The

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Panel is satisfied that by directing the disputed domain name to a commercial website allegedly offering the Complainant’s goods and services, in view of the composition of the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website (see Section 3.1.4 of the WIPO Overview 3.0).

Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. Having considered the Complainant’s submissions and in the absence of a formal Response, the Panel accepts the Complainant’s submission that on the evidence there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name.

The Complainant points out that the Respondent is hiding its identity behind a WhoIs privacy wall. It is well established that this, too, can be a further indicator of bad faith in certain circumstances.

Consequently, the Panel finds that the disputed domain name was registered and used by the Respondent in bad faith within Paragraph 4(a)(iii) 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 <sonnyangelchile.com> be transferred to the Complainant.

/Daniel Peña/ Daniel Peña Sole Panelist Date: May 19, 2025