DECISION

 

PHILIP MORRIS USA INC. v. Terry Eklund / yang ou

Claim Number: FA2607002234910

 

PARTIES

Complainant is PHILIP MORRIS USA INC. ("Complainant"), represented by Gina Carrillo of Corsearch, Inc., New York, USA. Respondent is Terry Eklund / yang ou ("Respondent"), Multiple Locations.

        

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <marlborohome-us.com> and <usmarlboro.com>, registered with GoDaddy.com, LLC.

 

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.

 

Jeffrey J. Neuman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 26, 2026; Forum received payment on July 26, 2026.

 

On August 12, 2026, GoDaddy.com, LLC confirmed by e-mail to Forum that the <marlborohome-us.com> and <usmarlboro.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement 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 August 19, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@marlborohome-us.com, postmaster@usmarlboro.com. Also on August 19, 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 September 9, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman 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 names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

The two disputed domain names are registered to different nominal registrants. The Panel finds, however, that the record, considered as a whole, is sufficient to treat them as under common control for this proceeding.

The names were registered only eight days apart, <usmarlboro.com> on June 29, 2026 and <marlborohome-us.com> on July 7, 2026. Both are registered through GoDaddy.com, LLC; both use a qq.com registrant email address in the Registrar's verification; and the contact information for <usmarlboro.com> includes facially implausible address and city fields. The contemporaneous WHOIS evidence also reports that the names resolved to the same IP address, 104.18.213.228, and used GoDaddy's domaincontrol.com nameserver infrastructure, although the latter facts alone would carry limited weight because shared hosting and common nameserver services can be used by unrelated registrants.

More importantly, the domain names share a distinctive naming pattern, combining MARLBORO with a U.S. identifier, and resolve to coordinated commercial storefronts. The sites use substantially similar red, black, and white design elements, American-West imagery, and "Featured Collection" presentations. Each promotes the same product, "Marlboro Red Short (US) Carton," at the same stated price of $69.00, and each offers other cigarette brands, including Newport. The matching product presentation, pricing, and overall site design materially strengthen the inference that the domain names are operated as part of the same commercial scheme.

The Panel does not find, on this record alone, that the nominal registrants are aliases or that either used false information with the purpose of evading this proceeding. The cumulative circumstances nonetheless support an inference of common control sufficient to permit this Complaint to proceed against both disputed domain names. The Panel therefore considers them in this single proceeding.

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts rights in the MARLBORO mark through its United States trademark registrations for cigarettes and tobacco products, including Registration No. 68,502, registered April 14, 1908. Complainant contends that the disputed domain names are confusingly similar because each incorporates MARLBORO in full and adds only "home," "us," a hyphen, and the ".com" generic top-level domain.

Complainant contends that Respondent is not commonly known by the disputed domain names, is not authorized to use MARLBORO, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use. According to Complainant, the disputed domain names resolve to commercial websites that prominently feature Complainant's trademark, offer cigarettes that bear Complainant's trademark and the websites use similar design elements, such as specific color schemes (red, black, and white), rugged cowboys, layout structures, or images to falsely impersonate the Complainant,

Complainant further contends that Respondent registered and uses the disputed domain names in bad faith by attempting to attract Internet users for commercial gain through a likelihood of confusion as to source, sponsorship, affiliation, or endorsement. Complainant also relies on the asserted fame of its mark, Respondent's alleged use of inaccurate registration information, and the MX records associated with <usmarlboro.com>.

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       Complainant owns United States trademark registrations for MARLBORO, including Registration No. 68,502, registered April 14, 1908 with the United States Patent and Trademark Office.

2.       The disputed domain names <marlborohome-us.com> and <usmarlboro.com> were created on July 7, 2026 and June 29, 2026, respectively.

3.       Respondent is not commonly known by either disputed domain name and is not authorized to use the MARLBORO mark.

4.       The disputed domain names were registered and used in bad faith. Respondent had knowledge of the famous MARLBORO mark when registering the disputed domain names and used them to create a false impression of affiliation with, or authorization by, 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 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 3.1 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

Complainant's trademark registrations establish rights in the MARLBORO mark under Policy paragraph 4(a)(i).

Both disputed domain names incorporate MARLBORO in its entirety. The addition of "home" and "us," as well as a hyphen in <marlborohome-us.com>, does not prevent the mark from remaining recognizable. The ".com" generic top-level domain is disregarded in this comparison. See Philip Morris USA Inc. v. ICS Inc., D2013-1306 (WIPO September 17, 2013) (finding <marlborow.com> confusingly similar to MARLBORO where the domain name incorporated the mark with the addition of a single letter and the ".com" gTLD); see also Philip Morris USA Inc. v. Su Mei Lin, D2019-1636 (WIPO August 22, 2019) (finding <usa-marlboro.com> confusingly similar to MARLBORO because the addition of the geographic term "USA" and a hyphen did not dispel confusing similarity). The Panel finds that <marlborohome-us.com> and <usmarlboro.com> are confusingly similar to Complainant's MARLBORO mark under Policy paragraph 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production then shifts to Respondent to show rights or legitimate interests under Policy paragraph 4(c). Complainant has met its initial burden. See Philip Morris USA Inc. v. ICS Inc., D2013-1306 (WIPO September 17, 2013) (finding that a complainant made a prima facie showing where the respondent was not known by the disputed domain name and had not demonstrated use or preparations to use it in connection with a bona fide offering).

The verified registrant names, Terry Eklund and yang ou, do not correspond to either disputed domain name. Nothing in the record indicates that Respondent is commonly known by MARLBORO, <marlborohome-us.com>, or <usmarlboro.com>. Complainant also states that it has not authorized Respondent to use its mark.

The evidence further shows commercial sites using the MARLBORO mark in the disputed domain names and on the sites themselves, while offering cigarettes for sale, including products identified with Complainant's mark and products of other brands. This use does not satisfy the conditions applicable to a bona fide reseller offering. Under the Oki Data test, a reseller must, among other things, use the site to sell only the trademarked goods and accurately and prominently disclose its relationship, or lack of relationship, with the trademark holder. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) (setting out conditions for a reseller's bona fide offering under Policy paragraph 4(c)(i)); see also Philip Morris Products S.A. v. 哥 哲 (Ge Zhe), D2026-2332 (WIPO July 23, 2026) (finding that a website selling Marlboro products alongside competing third-party products, without an accurate and prominent disclaimer, did not satisfy the Oki Data test). The record here shows sales of other cigarette brands in addition to Marlboro-branded products, and it does not show an accurate and prominent disclosure of Respondent's lack of affiliation with Complainant. That use does not constitute a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). Respondent did not rebut Complainant's prima facie case. The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy paragraph 4(a)(ii).

Registration and Use in Bad Faith

Policy paragraph 4(b)(iv) identifies bad faith where a respondent uses a domain name intentionally to attract, for commercial gain, Internet users by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or a product or service on it.

The evidence supports that finding here. Each disputed domain name includes MARLBORO, and the associated sites use the mark while presenting commercial cigarette storefronts. The sites advertise Marlboro-branded cigarettes and other cigarette brands. This use is calculated to attract Internet users seeking Complainant or its products by creating a likelihood of confusion as to the sites' affiliation or authorization. See Philip Morris Products S.A. v. 哥 哲 (Ge Zhe), D2026-2332 (WIPO July 23, 2026) (finding bad faith under Policy paragraph 4(b)(iv) where MARLBORO-formative domain names were used to attract Internet users for commercial gain through confusion and to offer competing third-party products).

The Panel also finds that Respondent registered the disputed domain names with knowledge of Complainant's rights. Complainant's MARLBORO mark has been registered and used for cigarettes for many years, and its Registration No. 68,502 issued on April 14, 1908. Complainant also owns and uses <marlboro.com> in connection with its MARLBORO website. Numerous prior panels have recognized the worldwide fame of the MARLBORO mark. See Philip Morris USA Inc. v. ICS Inc., D2013-1306 (WIPO Sept. 17, 2013) (recognizing that the MARLBORO trademark is famous worldwide and finding bad faith where the respondent's commercial website use, coupled with the mark's fame, made registration without knowledge of Complainant's rights inconceivable); see also Philip Morris USA Inc. v. Su Mei Lin, D2019-1636 (WIPO Aug. 22, 2019) (finding MARLBORO famous worldwide and concluding that it was implausible that the respondent had been unaware of the mark when registering <usa-marlboro.com>). The deliberate incorporation of the mark, the sites' presentation of Marlboro-branded products, and the use of a distinctive U.S.-focused MARLBORO naming pattern demonstrate Respondent's awareness of Complainant and its mark when registering the names.

The MX records for <usmarlboro.com> are not independently probative of phishing on this record, and the Panel does not rely on them for that purpose. The commercial, confusing use of both disputed domain names is sufficient to establish bad-faith registration and use under Policy paragraph 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 <marlborohome-us.com> and <usmarlboro.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey J. Neuman, Panelist

Dated: September 22, 2026