Dreams USA, Inc. v Jony MAICK

WIPO Case No. D2025-0908

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dreams USA, Inc. v. Jony MAICK

Case No. D2025-0908

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 Jony MAICK, United States.

2. The Domain Name and Registrar

The disputed domain name <sonnyangelus.com> is registered with Cosmotown, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2025. connection with the disputed domain name. On March 8, 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 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 11, 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 14, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 4, 2025. Due to an apparent issue with the notification,
on April 9, 2025, the Center granted the Respondent until April 24, 2025, to indicate whether the Respondent
would like to participate in this proceeding. The Respondent did not submit any communications.

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The Center appointed Evan D. Brown as the sole panelist in this matter on April 16, 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 in the business of distributing, among other things, collectible figures called Sonny Angel
dolls. It owns the trademark SONNY ANGEL and enjoys the benefits of registration of that mark in the
United States (United States Reg. No. 6,663,607, registered on March 8, 2022).

According to the WhoIs records, the disputed domain name was registered on February 8, 2025. The Complainant asserts that the Respondent has used the disputed domain name to publish a web page falsely claiming to be the “Sonny Angels Official Online Store.” The web page purports to offer for sale multiple products, including unauthorized and likely counterfeit or gray market “Sonny Angel” dolls.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

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.

The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7. 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. Id. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain name is identical or confusingly similar to that mark.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
SONNY ANGEL mark by providing evidence of its trademark registrations. See WIPO Overview 3.0, section
1.2.1.

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The disputed domain name incorporates the SONNY ANGEL mark in its entirety with the addition of the term remains recognizable for a showing of confusing similarity under the Policy.

“us,” which does not prevent a finding of confusing similarity between the disputed domain name and the

It is standard practice when comparing a disputed domain name to a complainant’s trademarks, to not take the extension into account. See WIPO Overview 3.0 at 1.11.1 (“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

The Panel finds that the Complainant has established this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

On this point, the Complainant asserts, among other things, that: (1) the Respondent is not, and has never been, commonly known by the disputed domain name, (2) the Respondent is not authorized to use the Complainant's SONNY ANGEL mark for any purpose, (3) the Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, according to the Complainant, the Respondent is using the disputed domain name to redirect and mislead consumers into thinking that the products featured on the resulting pages are products authorized by the Complainant.

UDRP panels have recognized that website operators using a domain name containing a complainant's trademark to undertake sales related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name. As outlined in the Oki

Data test (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), the following cumulative requirements are applied:

(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder;
and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Panel has applied the Oki Data test to the facts of this case and finds that the circumstances do not warrant the finding of a bona fide offering of goods and services. The Panel credits the Complainant's assertions – which the Respondent has not rebutted – that the website at the disputed domain name does not provide any disclosure of the Respondent’s identity and its lack of any relationship with the Complainant and that the Respondent purports to offer for sale goods other than those offered by the Complainant.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent's favor. The use of a domain name for illegal activity such as impersonation or passing off can never confer rights or legitimate interests on a respondent. Société des Produits Nestlé S.A. v. Great Homes, jobs-nestle.com, WIPO Case No. D2024-2911; WIPO Overview 3.0, section 2.13.1.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

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C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith.

The Complainant asserts that the Respondent has used the disputed domain name to publish a web page falsely claiming to be the “Sonny Angels Official Online Store,” offering for sale multiple products, including unauthorized and likely counterfeit or gray market “Sonny Angel” dolls. Such use is indicative of bad faith

under paragraph 4(b)(iv) of the Policy, which provides that it is evidence of bad faith registration and use if 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 the website.

The Panel finds that the Respondent’s actions, as described by the Complainant and unrefuted by the

Respondent, constitute bad faith registration and use of the disputed domain name.

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 <sonnyangelus.com> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: April 30, 2025