Dreams USA, Inc. v LOLO Fafa

WIPO Case No. D2025-0909

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dreams USA, Inc. v. LOLO Fafa

Case No. D2025-0909

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 LOLO Fafa, France.

2. The Domain Name and Registrar

The disputed domain name <sonnyangel-market.com> (the “Disputed Domain Name”) is registered with

Ligne Web Services SARL (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March
5, 2025. On March 6, 2025, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Disputed Domain Name. On March 6, 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 (Ligne Web Services SARL d/b/a LWS) and
contact information in the Complaint. The Center sent an email communication to the Complainant on March
7, 2025, providing the registrant and contact information disclosed by the Registrar, and requesting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on
March 11, 2025.

On March 7, 2025, the Center informed the parties in French and English, that the language of the registration agreement for the Disputed Domain Name is French. On March 11, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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”).

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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.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 11, 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

Founded in 2009, the Complainant is the exclusive North and South American distributor of limited-edition art toys, giftware, and lifestyle accessories created by its parent company Dreams Inc. (Japan). Its products include a line of collectible figures called SONNY ANGEL dolls, which are tiny PVC figures representing a fictitious two-year-old cherub.

The Complainant has rights in the SONNY ANGEL mark. The Complainant owns the United States Trade
Mark Registration No. 6663607 for SONNY ANGEL in Class 28 registered on March 8, 2022 (the
“Complainant’s Trademark”).

The Disputed Domain Name was registered on February 7, 2025, a few years after the Complainant registered the Complainant’s Trademark. At the time of the filing of the Complaint, the Disputed Domain Name purportedly resolved to an active website (the “Respondent’s Website”) displaying and offering for sale “Sonny Angel” dolls that the Complainant suspects are likely counterfeit or gray market dolls. At the time of rendering this Decision, the Panel notes that the Disputed Domain Name resolves to an inactive website that shows “this site can’t be reached”.

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:

(a) The Disputed Domain Name is confusingly similar to the Complainant’s Trademark. The Disputed

Domain Name incorporates the Complainant’s Trademark in its entirety with the addition of the word
“market”. The addition of the term “market” does not prevent a finding of confusing similarity between the
Disputed Domain Name and the Complainant’s Trademark. Moreover, the generic Top-Level Domain
(“gTLD”) “.com” should be disregarded in assessing confusing similarity under the first element.

(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant

has not authorised the Respondent to use the Complainant’s Trademark for any purpose. The Respondent’s been using the Disputed Domain Name to mislead Internet users into thinking that the products featured on the Respondent’s Website are authorized SONNY ANGEL products and/or that the Disputed Domain Name is sponsored or endorsed by the Complainant. The “Oki Data” test does not apply here as the Disputed Domain Name is being used to sell goods other than the purported “Sonny Angel” products (which may or may not be legitimate), and it does not accurately disclose the Respondent’s lack of relationship with the Complainant.

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(c) The Respondent has registered the Disputed Domain Name and is using it in bad faith. Given that the Respondent has used the Disputed Domain Name to offer purported “Sonny Angel” products for sale which appeared to be identical to the Complainant’s authorised SONNY ANGEL products, the Respondent must have been fully aware of the existence of the Complainant’s Trademark when the Respondent registered and used the Disputed Domain Name. The Respondent aims to create a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website and has attempted to divert business away from the Complainant for the Respondent’s own commercial gain.

B. Respondent

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

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the Disputed Domain Name is French. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons. The Complainant submits that that the Disputed Domain Name consists of three English language words i.e. “sonny”, “angel” and “market”, such that the Complainant’s argument as to

confusing similarity would lack context if translated into another language. The Complainant also submits that the default language of the content purportedly displayed on the Respondent’s Website was English, suggesting that the Respondent is targeting English-language speakers. The Complainant further claims that the majority of the supporting materials for its Complaint are originally in English, and requiring the

Complainant to translate them and confirm the accuracy of the translated content would unduly complicate, delay, and increase the cost of the proceedings.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

The Panel is mindful of the requirement of paragraph 10(b) of the Rules which provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Panel observes that the Center has issued its case-related communications in both

French and English. The Respondent has chosen not to participate in the proceedings, and it has been notified of his default in both French and English.

Further, in ensuring fairness in the selection of language, the Panel shall take into consideration the parties’ level of comfortability with each language, as well as the expenses to be incurred and the possibility of delay in the proceedings if translation is required (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No.

D2003-0679). In the present case, the Panel notes that although the Respondent appears to be located in France, the Disputed Domain Name is in English language and the Respondent’s Website purportedly displayed English content, indicating that the Respondent understands English and would not be prejudiced by the proceeding in English. Furthermore, additional expenses will be incurred if the Complainant is required to submit documents in French and the proceeding may otherwise proceed expeditiously in English.

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Moreover, the Respondent did not object to the Complainant’s request to use English as the language of the proceedings.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

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 3.0, section 1.7.

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

The entirety of the Complainant’s Trademark is reproduced within the Disputed Domain Name. Furthermore, the gTLD in this case “.com” may be disregarded for the purposes of assessing confusing similarity under the first element. Accordingly, the Disputed Domain Name is confusingly similar to the Complainant’s

Trademark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.11.

Although the addition of other terms (here, “market”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark 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.

In the present case, the Respondent did not submit a Response. The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

The Panel notes that there is no evidence to show that the Respondent has trademark rights corresponding
to the Disputed Domain Name, or that the Respondent has become commonly known by the Disputed
Domain Name. The Panel further notes the distinctiveness and worldwide reputation of the Complainant’s
Trademark, and the fact that the Complainant has provided no license or authorization of any kind to the
Respondent to use the Complainant’s Trademark or to apply for or use any domain name incorporating the
Complainant’s Trademark. The Respondent would likely not have adopted the Complainant’s Trademark if

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not for the purpose of creating an impression that the Disputed Domain Name is associated with, or
originates from, the Complainant. The reproduction of the Complainant’s Trademark and the use of the
generic term “market” in the Disputed Domain Name, and the fact that the Respondent’s Website purportedly
offered to sell the Complainant’s “Sonny Angel” products (which may or may not be legitimate) also lead to a
risk of implied affiliation as the Disputed Domain Name effectively impersonates or suggests sponsorship or

endorsement by the Complainant.

There is also no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the
Disputed Domain Name or a name corresponding to the Disputed Domain Name, is in connection with a
bona fide offering of goods or services or be regarded as legitimate noncommercial or fair use. The
Respondent’s Website also purportedly featured and offered to sell other products apart from the purported
“Sonny Angel” products without a disclaimer disclosing the lack of registrant’s relationship with the
Complainant. Such use cannot constitute fair use under the Oki Data test (see Oki Data Americas, Inc. v.
ASD, Inc., WIPO Case No. D2001-0903 and WIPO Overview 3.0, section 2.8).

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 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.

In the present case, the Panel notes that the Disputed Domain Name incorporates the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. Further, the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Name.
Trademark in its entirety, and the Respondent’s Website purportedly featured the Complainant’s Trademark
and advertised the purported “Sonny Angel” products without the Complainant’s authorization. The
Respondent registered and used the Disputed Domain Name to mislead and divert Internet users to the

Panels have previously held that a finding of bad faith can be established where a complainant’s trademark is shown to be well-known or in wide use at the time of registration of the disputed domain name (see LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091). The Respondent must have been aware of the

Complainant’s Trademark when registering and using the Disputed Domain Name given the well-known
nature of the Complainant’s Trademark and it was put into use well before the Respondent registered the
Disputed Domain Name.

The Panel notes that the current inactive status of the disputed domain name does not change Panel’s finding on bad faith. WIPO Overview 3.0, section 3.3.

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

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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 Disputed Domain Name <sonnyangel-market.com> be transferred to the Complainant.

/Gabriela Kennedy/
Gabriela Kennedy
Sole Panelist
Date: April 25, 2025