DECISION

 

PHILIP MORRIS USA INC. v. Lily Anderson / Salim Shaik

Claim Number: FA2512002192157

 

PARTIES

Complainant is PHILIP MORRIS USA INC. ("Complainant"), represented by Gina Carrillo of Corsearch, Inc., New York, USA. Respondent is Lily Anderson / Salim Shaik ("Respondent"), Multiple Locations.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <marlbororewards.com.co> and <marlboro-rewards.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu and Dynadot Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Héctor Ariel Manoff as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 2, 2025; Forum received payment on December 2, 2025.

 

On December 2 and 3, 2025, Hosting Concepts B.V. d/b/a Registrar.eu and Dynadot Inc confirmed by e-mail to Forum that the <marlbororewards.com.co> and <marlboro-rewards.com> domain names are registered with Hosting Concepts B.V. d/b/a Registrar.eu and Dynadot Inc and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Registrar.eu and Dynadot Inc have verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu and Dynadot Inc registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 8, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@marlbororewards.com.co, postmaster@marlboro-rewards.com. Also, on December 8, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On December 30, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Héctor Ariel Manoff as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Complainant has alleged that the domain names at issue are effectively controlled by the same person and/or entity and have submitted evidence to prove that the web pages available at the domain names had almost identical content (Exhibit H).

 

This Panel also finds that both disputed domain names <marlbororewards.com.co> and <marlboro-rewards.com> have similar structures: Complainant's trademark MARLBORO plus the term REWARDS.

 

The disputed domain names resolve to similar websites, using similar color scheme, similar layout (Exhibit H).

 

In addition, they share the same Nameserver: Cloudflare, the same email provider: @outlook and the same country code: +44.

 

Taking into account Complainant's submissions about the use of the trademarks on the disputed domain names, and the fact that no timely Response has been received, the Panel finds support for accepting the Complaint filed in respect of all the domain names in dispute.

 

PARTIES' CONTENTIONS

A. Complainant

1- Complainant, Philip Morris USA Inc. is the largest tobacco company in the United States which has been making premium tobacco products for more than 150 years.

2- Complainant offers a loyalty rewards program to its customers, over the age 21, under the mark MARLBORO at https://www.marlboro.com/gtc/rewards-terms-and-conditions.

3- Complainant owns trademark rights on MARLBORO for many years.

4- The disputed domains names <marlbororewards.com.co> and <marlboro-rewards.com> are confusingly similar to Complainant's MARLBORO trademark because it incorporates the trademark in its entirety, adds the term "rewards", a hyphen and the gTLDs ".com", and ".com.co."

5- Respondent has no rights or legitimate interests in respect of the disputed domain names.

6- The disputed domain names resolve to websites that use the same red, black and white color scheme as Complainant and provide detailed information about Complainant's Marlboro rewards program giving the appearance that it is affiliated with or authorized by the Complainant.

7- Respondent uses the domain names to phish for Complainant's customer's personal information.

8- The disputed domain names have been registered and used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Philip Morris USA Inc., owns trademark registrations for MARLBORO as from more than 100 years which are famous and used in connection with commercialization of cigarettes. Respondent registered and is using the domain names in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in MARLBORO marks through trademark registrations and use for many years (Exhibits E, F and G). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).") see also Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO).

 

Since Complainant provides evidence of registration of the MARLBORO mark with the USPTO and other Trademark Offices, the Panel finds Complainant has demonstrated rights in the MARLBORO mark per Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain names are confusingly similar to the MARLBORO mark as they each incorporate Complainant's trademarks along with descriptive term "rewards", (which is also used by Complainant in its "rewards program" launched in 2019) (Exhibit K) and a hyphen and the gTLDs. ".com" and ".com.co".

 

Panels have found additional terms insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."). Further, TLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.").

 

Given that Respondent only adds a generic term (which is also used by Complainant on its loyalty rewards program at https://www.marlboro.com/gtc/rewards-terms-and-conditions), a hyphen and TLDs to the MARLBORO mark, the Panel concludes the disputed domain names are confusingly similar to Complainant's marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

The Panel finds that Respondent has no rights or legitimate interests in the <marlbororewards.com.co> and <marlboro-rewards.com> domain names because Complainant has not authorized Respondent to use the MARLBORO mark. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

In addition, WHOIS information does not suggest that Respondent is commonly known by the disputed domain name (Exhibit I). This Panel finds that Respondent has never been commonly known by the domain names. 

 

Respondent has neither filed a response nor submitted evidence to prove that Respondent has any trademark rights in the <marlbororewards.com.co> and <marlboro-rewards.com> domain names.

 

The evidence submitted by Complainant shows that Respondent's use of the <marlbororewards.com.co> and <marlboro-rewards.com> domains is not a bona fide offering of goods. (Exhibit H). The disputed domain names currently resolve to sites which use the same red, black and white color scheme as Complainant and provide detailed information about Complainant's Marlboro rewards program giving the appearance that it is affiliated with or authorized by the Complainant. 

 

This Panel agrees with Complainant that Respondent is not using the domain name in connection with a legitimate noncommercial use or fair use under Policy 4(c)(iii).

 

Therefore, the Panel agrees that Respondent is not commonly known by the disputed domain names and does not have legitimate interest under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The domains registration by Respondent was done after Complainant's domain name and trademarks had been registered more than 100 years ago (Exhibit E, F and J).

 

The domain names were registered on September 25, 2024 and August 27, 2025.

 

Taking it into account, as well as the fame of Complaint's trademark, it is clear for this Panel that the registration of the domain names was done with Complainant's marks in mind. Registration was done in bad faith.

 

As regards the use, since the disputed domain names <marlbororewards.com.co> and <marlboro-rewards.com> include Complainant's trademark along with a generic term (which is also used by Complainant at https://www.marlboro.com/gtc/rewards-terms-and-conditions) and the sites show Complainant's trademark by creating association with it (Exhibit H), the Panel finds that the use of the domain names was done in bad faith.

 

The Panel concludes that Respondent has the intention of creating an association with Complainant and its products.

 

This Panel concludes that Respondent has registered the domain names with the intent to attract and divert Internet users to the corresponding websites for its own benefit. See Carey Int'l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) ("[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv)."); 

 

The Panel determines that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <marlbororewards.com.co> and <marlboro-rewards.com> domain names be TRANSFERRED from Respondent to Complainant.

 

__________________________________________________________________

 

Héctor Ariel Manoff, Panelist

Dated: January 5, 2026