Dreams USA, Inc. v sonnyangelparents Gomes, Sonnyangelparents

WIPO Case No. D2025-0975

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dreams USA, Inc. v. sonnyangelparents Gomes, SONNYANGELPARENTS

Case No. D2025-0975

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 sonnyangelparents Gomes, SONNYANGELPARENTS, United States.

2. The Domain Name and Registrar

The disputed domain name <sonnyangelparents.com> is registered with Tucows Domains Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2025.
On March 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 11, 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 (Contact Privacy Inc. Customer 0173975821) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 12,
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 17, 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 communication to the Center. The Center informed the Parties that it would proceed to panel appointment on April 11, 2025.
Complaint, and the proceedings commenced on March 20, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 9, 2025. The Respondent sent several email communications to the

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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, for which it enjoys the benefits of registration (United
States Reg. No. 6,663,607, registered on March 8, 2022).

According to the WhoIs records, the disputed domain name was registered on January 31, 2025. The Complainant asserts that the Respondent has used the disputed domain name to publish a web page on which products including unauthorized and likely counterfeit or gray market SONNY ANGEL dolls are offered for sale.

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 substantively respond to the Complainant’s contentions but merely indicated that

“the website domain has been removed and canceled on my end”.

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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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. 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 registration. See WIPO Overview 3.0, section

1.2.1.

The disputed domain name incorporates the SONNY ANGEL mark in its entirety along with the word
“parents”, which does not prevent a finding of confusing similarity between the disputed domain name and

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the Complainant’s SONNY ANGEL mark. See WIPO Overview 3.0, section 1.8. The SONNY ANGEL mark
remains recognizable for a showing of confusing similarity under the Policy.

It is standard practice when comparing a disputed domain name to a complainant’s trademark to disregard the generic Top-Level Domain (“gTLD”). See WIPO Overview 3.0 at 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’) 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, and (3) the Respondent is not using the disputed domain name for any bona fide offering of goods or services or for 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 believing that the products featured on the website associated with the disputed domain name are authorized by the Complainant.

UDRP panels have recognized that website operators using a disputed domain name containing a complainant’s trademark to offer sales of goods may in certain cases be making a bona fide offering of goods or services and therefore may have a legitimate interest in the disputed 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 or services. The Panel credits the Complainant's assertions – which the Respondent has not rebutted – that the website associated with the disputed domain name does not disclose the identity of the Respondent or its lack of any relationship with the Complainant.

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

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 Panel finds that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s SONNY ANGEL mark as to the source, sponsorship, affiliation, or endorsement of the website or of products on the website. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.

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The Complainant has provided evidence that the Respondent has used the disputed domain name to offer unauthorized and likely counterfeit or gray market products bearing the SONNY ANGEL mark, without any authorization or affiliation. The Panel finds that such use, particularly where there is no disclaimer or

transparency about the relationship with the Complainant, amounts to bad faith use of the disputed domain
name. Additionally, the Panel finds it more likely than not that the Respondent registered the disputed

domain name with knowledge of the Complainant’s rights and with the intention of exploiting its goodwill.

The Panel finds that the Complainant has established this third element under 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 <sonnyangelparents.com> be transferred to the Complainant.

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