DECISION

 

Philip Morris USA Inc. v. Mumtaz Khan

Claim Number: FA2603002211628

 

PARTIES

Complainant is Philip Morris USA Inc. ("Complainant"), represented by Corsearch, Inc., New York, USA. Respondent is Mumtaz Khan ("Respondent"), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marlboromerchamdise.us>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 20, 2026; Forum received payment on March 20, 2026.

 

On March 23, 2026, NameCheap, Inc. confirmed by e-mail to Forum that the <marlboromerchamdise.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On March 30, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2026 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@marlboromerchamdise.us. Also on March 30, 2026, 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 April 21, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 to the usTLD 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 usTLD Policy, 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends in part as follows:

 

Complainant is the largest tobacco company in the United States and has been making premium tobacco products for more than 150 years. Complainant has been the leading cigarette manufacturer in the United States for more than 40 years. Complainant owns U.S. federal trademark registrations for its MARLBORO mark.

 

Respondent's <marlboromerchamdise.us> domain name is confusingly similar to Complainant's MARLBORO mark. The domain name incorporates the entirety of Complainant's MARLBORO trademark, adds a misspelled version of the word "merchandise" and adds the "us" top-level domain name. These changes are not sufficient to differentiate an at-issue domain name from the it incorporates per Policy ¶ 4(a)(i).

 

Respondent has no rights and legitimate interests in the at-issue domain name. Respondent is not commonly known by the domain name and there is no evidence of Respondent having trademark rights in the domain name or Complainant's mark at the time it was registered. Respondent is not affiliated with Complainant and Complainant has not granted Respondent any authorization to use its MARLBORO trademark. Respondent's at-issue domain name resolves to a commercial website offering a variety of products for sale that are unrelated to Complainant. The website uses Complainant's mark, offers products featuring Complainant's trademark, and the website uses that same color scheme as Complainant does. The <marlboromerchamdise.us> website appears to impersonate Complainant. Respondent's use of the domain name is not a bona fide offering of goods or services, or a legitimate non-commercial use fair use of the at-issue domain name. Notably, the domain name was registered significantly after Complainant's registration of its MARLBORO trademark.

 

The at-issue domain name has been registered in bad faith or being used in bad faith. Respondent uses <marlboromerchamdise.us> to resolve to a website where a variety of goods unrelated to Complainant are offered for sale. The Respondent is attempting to profit from the goodwill surrounding Complainant's MARLBORO trademark. The Respondent registered the domain name in bad faith under Policy ¶4(b)(iv). Respondent uses the at-issue domain name to attempt to impersonate Complainant which evinces bad faith and use under Policy ¶4(a)(iii). Given the fame of Complainant and its mark and the incorporation of such mark into the at-issue domain name and use prominently on the <marlboromerchamdise.us> website along with a similar color scheme as Complainant's, Respondent had actual knowledge of Complainant and its MARLBORO trademark. Additionally, the domain name is configured to enable email indicating that Respondent has intentions to use such email for phishing or spam purposes.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the MARLBORO trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the MARLBORO trademark.

 

Respondent uses the at-issue domain name to address a website appearing to look like it may be affiliated with Complainant and featuring a variety of merchandise unrelated to Complainant.

 

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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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 3.1 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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Any of Complainant's USPTO registrations for MARLBORO is sufficient to establish Complainant's rights in MARLBORO for the purposes of usTLD Policy 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.")

 

The at-issue domain name contains Complainant's entire MARLBORO trademark followed by an overt misspelling of the suggestive term "merchandise," with all followed by the ".us" top-level domain name. The differences between Respondent's <marlboromerchamdise.us> domain name and Complainant's MARLBORO trademark are insufficient to distinguish the domain name from the trademark under usTLD Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent's <marlboromerchamdise.us> domain name is confusingly similar to Complainant's MARLBORO mark. Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable 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.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).

 

The WHOIS information for <marlboromerchamdise.us> leads to a finding that the domain name's registrant is "Mumtaz Khan" and there is no evidence in the record indicating that Respondent is in anyway known by the <marlboromerchamdise.us> domain name. The Panel thus finds that Respondent is not commonly known by the at-issue domain name for the purposes of usTLD Policy ¶4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

The record indicates also that Respondent is not the "owner or beneficiary of a trade or service mark that is identical to the domain name" pursuant to usTLD Policy ¶ 4(c)(i). Given Complainant's worldwide use of the MARLBORO mark and its multiple registrations of such mark it would be unlikely for Respondent to be able to assert any ownership of a trademark identical to MARLBORO. Additionally, the record does not disclose any legitimate connection between Respondent and the MARLBORO mark. Further, Respondent has made no attempt whatsoever to show that it has rights in MARLBORO. See Natural Life Collections, Inc. v. Cary Nedd / CaryNedd, FA 2119765 (Forum Nov. 1, 2024) (finding absent any contrary evidence that Respondent was not the owner or beneficiary of a trade or service mark that is identical to the domain name since "it is unlikely that this or any other governmental trademark agency would register a trademark identical to the domain name or any other mark identical or similar to the domain name in the name of any person other than Complainant or an affiliate, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to the domain name.").

 

Respondent's at-issue domain name addresses a website that creates an impression that it is associated with Complainant and Complainant's MARLBORO trademark. The domain name and its associated website divert customers away from Complainant and to Respondent's own website there offering merchandise which is unrelated to Complainant and from which Respondent presumably receives commercial benefit. Using the at-issue domain in this manner constitutes neither a bona fide offering of goods or services under usTLD Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under usTLD Policy ¶ 4(c)(iv). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent's use of the complainant's LIFESTYLE LOUNGE mark to redirect internet users to respondent's own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Given the foregoing, Respondent lacks rights and lacks legitimate interests in respect of <marlboromerchamdise.us>.

 

Registration or Use in Bad Faith

As discussed below without being exhaustive, Respondent acted in bad faith.

 

Respondent uses the confusingly similar at-issue domain name to address a website that appears as if it may be sponsored or endorsed or otherwise associated with Complainant. Respondent's offers website merchandise that is unrelated to Complainant's offering. Respondent's use of <marlboromerchamdise.us> to pass itself off as Complainant is disruptive to Complainant's business and is intended to divert internet users looking for Complainant to Respondent's website so that Respondent might in any of an array of foul schemes wrongly capitalize on the confusion Respondent created between the <marlboromerchamdise.us> domain name and Complainant's MARLBORO trademark. Respondent's use of <marlboromerchamdise.us> thus demonstrates Respondent's bad faith registration or use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Chevron Intellectual Property LLC v. Domain ID Shield Service / Domain ID Shield Service CO., Limited, FA 1841700 (Forum June 21, 2019) (finding that respondent was using "chevronplacement.com" in bad faith in order to "disrupt the business of Complainant by causing internet users to think an affiliation exists between Respondent's domain names and Complainant");see also, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."); see also, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) ("Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the MARLBORO mark when it registered <marlboromerchamdise.us> as a domain name. Respondent's prior knowledge is apparent given MARLBORO's long term and global notoriety and given Respondent's use of the domain name to address a website appearing as if it may be affiliated with Complainant. Respondent's knowledge of Complainant's rights in MARLBORO further demonstrates Respondent's bad faith registration and/or use under the Policy. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum Sept. 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).

 

DECISION

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

 

Accordingly, it is Ordered that the <marlboromerchamdise.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: April 21, 2026