Dreams USA, Inc. v JImmy Benavidez, SonnyAngelUSA

WIPO Case No. D2025-3249

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dreams USA, Inc. v. JImmy Benavidez, SonnyAngelUSA

Case No. D2025-3249

1. The Parties

Complainant is Dreams USA, Inc., United States of America, (“United States” or “U.S.”) represented by

Hinckley, Allen & Snyder, LLP, United States.

Respondent is JImmy Benavidez, SonnyAngelUSA, United States.

2. The Domain Names and Registrar

The disputed domain names <sonnyangelcollectibles.com> and <sonnyhomesusa.com> (the “Domain

Names”) are registered with Tucows Domains Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2025. On August 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 14, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent (Tucows Domains, Inc.) and contact information in the Complaint. The Center sent an email communication to Complainant on the same day, providing the registrant and contact information disclosed by the Registrar, and requesting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 18, 2025.

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 Respondent of the Complaint, and the proceedings commenced on August 20, 2025. In accordance with the Rules, paragraph 5, the due date for the Response was September 9, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2025.

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The Center appointed John C. McElwaine as the sole panelist in this matter on September 18, 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

Complainant is a United States-based company that serves as the exclusive North and South American distributor of limited-edition art toys, giftware, and lifestyle accessories, particularly SONNY ANGEL collectible figures. Relevant to this matter, Complainant owns a U.S. trademark registration for SONNY ANGEL, Registration No. 6,663,607, registered March 8, 2022, in International Class 28. Complainant’s registered trademark rights are referred to as the “SONNY ANGEL Mark.”

The Domain Name <sonnyhomesusa.com> was registered on June 18, 2025, and
<sonnyangelcollectibles.com> was registered on March 7, 2025. The Domain Names resolve to websites
that offer various massage products with <sonnyangelcollectibles.com> automatically redirecting to
<sonnyhomesusa.com>. The sub-webpage at “
collection.com” displays unauthorized SONNY ANGEL dolls for sale and includes a copyright notice “© 2025,

SonnyAngelUSA.”

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Names.

As background, Complainant asserts that it operates as the exclusive North and South American distributor for the widely popular SONNY ANGEL collectible figures, as evidenced by coverage in The New York Times and Vox.com. Complainant holds valid trademark rights in the SONNY ANGEL Mark and claims to have

built substantial goodwill in this brand.

With respect to the first element of the Policy, Complainant asserts that the Domain Names are confusingly similar to Complainant’s SONNY ANGEL Mark. Complainant alleges that <sonnyangelcollectibles.com> incorporates the SONNY ANGEL Mark in its entirety, while <sonnyhomesusa.com> incorporates the leading portion of the mark, and both suggest they are official marketplaces for purchasing SONNY ANGEL products.

With respect to the second element of the Policy, Complainant alleges that Respondent has no rights or legitimate interests in the Domain Names. Complainant contends it has never authorized Respondent to use its marks and that Respondent is using the Domain Names to mislead consumers through websites that display unauthorized and allegedly counterfeit “Sonny Angel” products and false copyright notices.

With respect to the third element of the Policy, Complainant alleges that Respondent deliberately registered the Domain Names incorporating Complainant’s marks with knowledge of Complainant’s rights, particularly given that Respondent is a serial infringer who previously lost a UDRP case for the disputed domain name <sonnyangelofficial.com>, Dreams USA, Inc. v. JImmy Benavidez, OracleT, WIPO Case No. D2024-5206.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this
UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:

(i)        the Domain Names are identical or confusingly similar to a trademark or service mark in which

Complainant has rights;

(ii)       Respondent has no rights or legitimate interests in respect of each Domain Name; and

(iii)      the Domain Names have been registered and are being used in bad faith.

Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above-cited elements are as follows.

within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co.
Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe
Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a
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 Complainant’s trademark and the Domain Names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark for the purposes of the Policy by providing evidence of its United States trademark registration for the SONNY ANGEL trademark.

With respect to <sonnyangelcollectibles.com>, the Panel finds the SONNY ANGEL mark is clearly recognizable within this Domain Name. The Domain Name incorporates Complainant’s SONNY ANGEL trademark in its entirety, with the addition of the descriptive term “collectibles,” which does not prevent a finding of confusing similarity. As noted in WIPO Overview 3.0, section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.

portion “SONNY” of the SONNY ANGEL Mark. However, the Panel finds confusing similarity is established. “SONNY” constitutes a dominant and distinctive feature of the SONNY ANGEL mark that is recognizable within the Domain Name. In addition, it is important to note that the webpage accessible from this Domain Name prominently displays the full SONNY ANGEL mark and offers “Sonny Angel” products for sale. The website also includes a false copyright notice “© 2025, SonnyAngelUSA” which demonstrates the connection to Complainant’s SONNY ANGEL Mark. As stated in Bayerische Motoren Werke AG (“BMW”) v.

The Domain Name <sonnyhomesusa.com> presents a closer question as it incorporates only the leading disputed domain names do not contain the mark in its entirety, “the content at the corresponding website serves to affirm a finding of confusing similarity”; see also WIPO Overview 3.0, section 1.14 (“panels have ... taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.”)

Accordingly, the Domain Names are confusingly similar to the marks for the purposes of the Policy. The Panel finds the first element of the Policy has been established for both Domain Names.

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B. Rights or Legitimate Interests

Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in the evidence demonstrating rights or legitimate interests. See section 2.1 of the WIPO Overview 3.0.

Here, Complainant has stated that it has not licensed or otherwise authorized Respondent to use its SONNY has been commonly known by the Domain Names or that Respondent has acquired any trademark rights in the term “sonny angel”. Respondent has not come forward with an explanation for choosing the Domain Names, which consist of or incorporate a portion of Complainant’s SONNY ANGEL Mark.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rights or legitimate interests in the Domain Names, such as those enumerated in the Policy[1] or otherwise.

[1] The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or

Respondent lacks rights or legitimate interests in the Domain Names. Respondent has not rebutted

Moreover, Respondent will not be able to claim that its operation of websites at the Domain Names provides legitimate interests. The evidence shows that Respondent is using the Domain Names for unauthorized commercial activities. Specifically, <sonnyangelcollectibles.com> automatically redirects to <sonnyhomesusa.com>, which operates a website offering various massage products, while a subpage displays unauthorized SONNY ANGEL dolls for sale with a false copyright notice claiming ownership as “SonnyAngelUSA.”

Even if Respondent were attempting to claim rights or legitimate interests as a reseller of Complainant’s products, such a claim would fail under the established Oki Data test. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel established four cumulative requirements that must be met for a reseller’s use of a trademark in a domain name to constitute a bona fide offering of goods or services:

(i) Actual Offering of Trademarked Goods or Services: While Respondent displays “Sonny Angel” products
on the sub-webpage at “ the evidence
suggests these are unauthorized and likely not genuine SONNY ANGEL merchandise offered by a legitimate

reseller. With no response from Respondent, this allegation can be presumed.

(ii) Exclusive Sale of Trademarked Goods: Respondent fundamentally fails this prong. The website at
<sonnyhomesusa.com> primarily offers various massage products, with SONNY ANGEL products relegated
to a subpage. As the WIPO Overview 3.0, section 2.8.1 makes clear, “the respondent must use the site to
sell only the trademarked goods” (otherwise, there is the possibility that the respondent is using the
trademark in a domain name to bait consumers and then switch them to other goods). Respondent’s “bait
and switch” operation using Complainant’s mark to attract consumers to massage products demonstrates

bad faith commercial exploitation.

(iii) Accurate and Prominent Disclosure: Respondent fails this critical requirement. Rather than disclosing
the lack of relationship with Complainant, Respondent actively misrepresents its relationship through a false
copyright notice stating “© 2025, SonnyAngelUSA.” This deceptive practice directly contradicts the Oki Data
requirement for accurate disclosure and instead creates the false impression of official authorization or
affiliation with Complainant.

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D2024-5206, against the same Complainant, as mentioned above. This pattern of registering multiple domain names incorporating the SONNY ANGEL Mark demonstrates precisely the type of “cornering” behavior the Oki Data test prohibits.

(iv) No “Cornering the Market”: Respondent has registered multiple domain names incorporating until losing a UDRP case, WIPO Case No.

notice claims suggesting ownership of Complainant’s intellectual property; (2) likely sale of counterfeit or unauthorized SONNY ANGEL products; (3) fraudulent misrepresentation of affiliation with Complainant; and (4) deceptive bait-and-switch tactics using Complainant’s trademark to promote unrelated massage products. Such activities cannot create a bona fide interest. See On AG, On Clouds GmbH v. Nguyen Luu, Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Vuong Hoang, AN NGUYEN, NEO CORP., and Ngoc Tam Nguyen, WIPO Case No. D2021-1714 (“a [disputed domain name’s] use cannot be deemed bona fide if the disputed domain names constitute trademark infringement”), citing Sai Machine Tools Pvt. Ltd. v. Mr. Sudhir Jaiswal, Shree Sai Extrusion Technik Pvt. Ltd, WIPO Case No.	Beyond failing the Oki Data test, Respondent’s conduct includes: (1) impersonation through false copyright such honest adoption; rather, respondent’s use was infringing and therefore not bona fide).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names, which Respondent has not rebutted. The Panel concludes that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where respondents “knew or should have known” of a complainant’s trademark rights and nevertheless registered domain names in which they had no rights or legitimate interests. Here, Respondent registered the Domain Names in 2025, well after Complainant’s SONNY ANGEL Mark was first used in commerce and registered. Moreover, the webpages that resolve/redirect from the Domain Names contain references to the SONNY ANGEL Mark and products.
The Panel finds that Respondent’s actions constitute bad faith under paragraph 4(b)(iv) of the Policy. Respondent registered Domain Names incorporating Complainant’s SONNY ANGEL Mark and used them to operate websites that create a likelihood of confusion with Complainant’s mark. Specifically: <sonnyangelcollectibles.com> directly incorporates the SONNY ANGEL Mark and redirects users to the Respondent’s commercial website. The website accessible at <sonnyhomesusa.com> prominently displays the SONNY ANGEL mark on its website and offers “Sonny Angel” products for sale. The website includes a false copyright notice “© 2025, SonnyAngelUSA” suggesting ownership of Complainant’s intellectual property. These activities are clearly designed to attract Internet users for commercial gain by creating confusion as to the source, sponsorship, or affiliation of the website.
The Panel also finds additional evidence of bad faith, including Respondent’s use of false and misleading copyright claims, and the establishment of a pattern of cybersquatting behavior through multiple domain name registrations targeting the same trademark owner. Thus, the Panel also finds that Complainant has established bad faith under paragraph 4(b)(ii) of the Policy in that Respondent engaged in a pattern of registering the Domain Names, preventing Complainant from reflecting its SONNY ANGEL Mark in these Domain Names.
For the reasons set forth above, the Panel holds that Complainant has met its burden under paragraph 4(a)(iii) of the Policy and has established that Respondent registered and is using the Domain Names in bad faith.

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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 Domain Names <sonnyangelcollectibles.com> and <sonnyhomesusa.com> be transferred to

Complainant.

/John C McElwaine/
John C McElwaine
Sole Panelist
Date: October 2, 2025

legitimate interests in a disputed domain name: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”