Dreams USA, Inc. v Lucas VILLOT, My Store

WIPO Case No. D2024-4799

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dreams USA, Inc. v. Lucas VILLOT, My Store

Case No. D2024-4799

1. The Parties

The Complainant is Dreams USA, Inc., United States of America, represented by Hinckley, Allen & Snyder,

LLP, United States of America (U.S.).

The Respondent is Lucas VILLOT, My Store, France.

2. The Domain Name and Registrar

The disputed domain name <sonnyangelsoff.com> (the “Domian Name”) is registered with Tucows Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20,
2024. On November 20, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Domain Name. On November 21, 2024, the Registrar transmitted by email
to the Center its verification response disclosing registrant and contact information for the Domain Name
which differed from the named Respondent (Contact Privacy Inc. Customer 0172741774) and contact
information in the Complaint. The Center sent an email communication to the Complainant on November 22,
2024, 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 November 25, 2024.

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 November 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2024. The Response was filed with the Center on December 17, 2024.

page 2

The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 8, 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 to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an American distributor of art toys, giftware, and lifestyle accessories created by its
parent company in Japan. Among its most popular items is a line of figures called SONNY ANGEL® dolls.
The doll has existed for twenty years and has reached a new height of popularity recently.

The Complainant has registered trademarks for the word mark SONNY ANGEL, such as U.S. trademark registration No. 6663607, filed March 10, 2021, and registered on March 8, 2022, in class 28.

The Domain Name was registered on October 10, 2024. The Domain Name has resolved to a website that
purports to sell multiple products, including unauthorized and possibly counterfeit versions of the
Complainant’s dolls. At the time of drafting the Decision, the Domain Name resolved to a webpage from

Shopify that informs that “this store is currently unavailable”.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations and argues that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name contains the Complainant’s trademark in its entirety, in combination with “s” and “off”. The additions do not distinguish the Domain Name from the Complainant’s trademark.

The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to register the Domain Name. The Respondent has registered the Domain Name to redirect and mislead consumers into thinking that the products featured on the Respondent’s webpage are authorized or endorsed by the Complainant. The Respondent is not a legitimate reseller under the Policy. The Domain Name is used to sell goods other than the Complainant’s products (if it indeed sells legitimate versions of the Complainant’s dolls). The Respondent’s webpage does not accurately disclose the Respondent’s lack of any relationship with the Complainant.

The Complainant believes it is evident that the Respondent knew of the Complainant and registered the
Domain Name to attract Internet users, and this proves bad faith under the Policy. Furthermore, the

Respondent’s has used a privacy service to conceal its identity.

B. Respondent

The Respondent filed a Response informing that “I would like to confirm that the domain name in question has been deleted by Shopify, and I am no longer its owner”.

6. Discussion and Findings

A. Identical or Confusingly Similar

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 Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

page 3

Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has established that it has trademark rights. In this case, the Domain Name incorporates the Complainant’s trademark with the addition of “s” and the word “off”. The additions do not prevent a finding of confusing similarity between the Domain Name and the trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”); see WIPO Overview 3.0, section 1.11.1.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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

While 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 often-impossible 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. 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.

The Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired trademark rights. There is no evidence of the Respondent’s 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. On the contrary, it is evidence of bad faith, see below. Moreover, the Panel notes that the composition of the

Domain Name carries a risk of implied affiliation with the Complainant.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

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.

The Respondent knew of the Complainant when the Respondent registered the Domain Name. It follows from the composition and use of the Domain Name. The documented use of the Domain Name is further evidence of bad faith. The Respondent falsely purports to be the Complainant or authorized by the

Complainant. The Respondent does not meet the requirements for legitimate reselling. See WIPO
Overview 3.0, Section 2.8.1.

The Respondent appears to have registered a Domain Name confusingly similar to the Complainant’s trademark to drive Internet traffic to the Respondent’s webpage. See paragraph 4(b)(iv) of the Policy.

Based on the available record, the Panel finds that the Complainant has established the third element of the
Policy.

page 4

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the Domain Name <sonnyangelsoff.com> transferred to the Complainant.

/Mathias Lilleengen/
Mathias Lilleengen
Sole Panelist
Date: January 16, 2025