ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Mr. Piers Morgan, Wake Up Productions Limited v. W NA, H Case No. D2025-0882 1. The Parties The Complainants are Mr. Piers Morgan, and Wake Up Productions Limited, United Kingdom, represented by J A Kemp LLP, United Kingdom. The Respondent is W NA, H, United Kingdom, represented by Tidman Legal, United Kingdom (see further below as to this representation). 2. The Domain Name and Registrar The disputed domain name
(the “Disputed Domain Name”) is registered with 123-Reg Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2025. On March 4, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 4, 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 (“Registration Private, Domains By Proxy, LLC”) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 5, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 6, 2025, the Complainant requested the suspension of the administrative proceedings, and the Center suspended the proceedings on the same date. On April 4, 2025, the Complainant requested an extension of the suspension of the proceedings and on April 4, 2025, the Center communicated the Parties of the extension of the suspension period until May 5, 2025. On May 2, 2025, the Complainant requested a further extension of the suspension period. In light of the Respondent’s objection, the proceedings were reinstituted as of May 5, 2025. The Complainant filed an amendment to the Complaint on May 12, 2025.
page 2 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 May 14, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2025. The Respondent’s representative sent email communications to the Center on March 19, 21, and 24, and May 2 and 11, 2025. The Center appointed Nick J. Gardner as the sole panelist in this matter on June 10, 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 First Complainant Piers Morgan is a well-known journalist, television presenter, and TV personality. The First Complainant’s full name is Piers Stefan Pughe-Morgan, but he has been known professionally and in popular culture by reference to the shortened form PIERS MORGAN since 1988. The Second Complainant Wake Up Productions Limited manages the intellectual property rights of the First Complainant, and is the registered proprietor of United Kingdom trade mark no. UK00003739820 PIERS MORGAN UNCENSORED, registered on June 10, 2022. The First Complainant is a director of the Second Complainant. The Disputed Domain Name was registered on November 29, 2005. The Disputed Domain Name resolves to a parked page. 5. Parties’ Contentions A. Complainant The amendment to the Complaint made on May 12, 2025 was rather curiously made in the form of a witness statement from the Complainant’s legal representative identified as Annex 5. The Amended Complaint goes into very great detail particularly as to the fame and celebrity of the First Complainant and as to the history of the Disputed Domain Name. The Panel does not intend to try to summarise the material in question. It will where relevant refer to relevant material in the discussion below. In summary the Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. It says that the First Complainant has unregistered trade mark rights in the name PIERS MORGAN and that the Disputed Domain Name is identical to that name and trade mark. It also says the Second Complainant has registered trade mark rights in respect of the term PIERS MORGAN UNCENSORED and the Disputed Domain Name is confusingly similar to that trade mark. B. Respondent Although the Center received email communications from the Respondent’s representative on March 19, 21, and 24, and May 2, and 11, 2025, no formal Response has been provided.
page 3 6. Discussion and Findings Preliminary Matters The Panel notes that no communication has been received directly from the Respondent. It is convenient at this stage to note that that following service of the Complaint the Center received email correspondence from Tidman Legal, the Respondent’s purported legal representative. The Respondent’s representative corresponded with the Center in some detail about the procedural steps that took place (see above). The Center has not received any communication to notify it that the representative has ceased acting for the Respondent, but no formal Response has been served. The Panel has checked that all relevant material has been sent to the email addresses provided by the representative and the Respondent. The Panel infers that for whatever reason a decision was made by the Respondent not to file a Response. The Panel considers that the Respondent has actual notice of the present proceeding, and the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with 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. A. Identical or Confusingly Similar The filed evidence as to the First Complainant’s claimed unregistered trade mark rights in the term PIERS MORGAN is substantial. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) addresses this issue as follows: “1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights? To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. (Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.) Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law
page 4 marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.” In the present case, the evidence establishes that on any view the First Complainant has a very substantial degree of fame and reputation in relation to PIERS MORGAN which operates as a source identifier for the business he carries out as a journalist, TV presenter, and TV personality. By way of example, he has over 2.3 million followers on his “@piersmorgan” Instagram account and his TV talk show “Piers Morgan Uncensored” has been streamed on YouTube over 1 billion times. The Panel has no doubt that the First Complainant has unregistered trademark rights in PIERS MORGAN. See also WIPO Overview 3.0 at section 1.5. It is well established that the Top-Level Domain (“TLD”), in this case “.com”, is viewed as a standard registration requirement and as such is typically disregarded under the first element test. See WIPO Overview 3.0 at section 1.11. Accordingly, the Disputed Domain Name is identical to the First Complainant’s trademark for the purposes of the Policy. See also WIPO Overview 3.0, section 1.7. Moreover, the Panel notes that the Second Complainant has provided evidence of registered trademark rights in PIERS MORGAN UNCENSORED, and the Disputed Domain Name is confusingly similar to that registered trademark. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
page 5 (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. The Disputed Domain Name was registered on November 29, 2005. The available record indicates that from June 21, 2006 to May 11, 2025, the registrant’s name was given as “Holt” with an address the same as that disclosed by the Registrar for the Respondent, whose name as disclosed by the Registrar is “W NA”, which appears to be fictitious and/or a pseudonym. It is not clear to the Panel whether or not there has been a substantive change of registrant since 2005, but the point does not matter. It is clear that at all material times since 2005 the Complainant has been a very well-known figure. His name is distinctive and unambiguously refers to him and no one else with any fame or reputation. He was well-known in 2005. By way of example, the First Complainant was an editor between 1995 and 2004 of the Daily Mirror, a significant British newspaper with present circulation of nearly 200,000 copies per issue. He wrote and released in March 2005 a best-selling memoir entitled “The Insider: The Private Diaries of a Scandalous Decade” in which he referred to his professional experience in journalism and provided insights into political, celebrity and media culture. The Panel has no doubt that the Respondent acquired the Disputed Domain Name (on whatever date that occurred) precisely because it corresponded to the First Complainant’s name. There is no other realistic possibility. Further the Respondent, who is legally represented, has chosen not to provide a Response and so has not provided any other credible explanation. The Panel infers that none exists. The Panel considers that registration of a domain name because it corresponds to the name of a well-known celebrity, with a view to in some way exploiting that fact, amounts to registration in bad faith. In this regard see Beyoncé Knowles v. Sonny Ahuja WIPO Case No. D2010-1431 where the Panel stated: “As to bad faith registration, given the statements made by Respondent, it is clear that Respondent knew of Complainant at the time he registered the Domain Name. Indeed, Respondent all but admits that the Domain Name was registered because of his knowledge of and to create an association with Complainant[…]. Accordingly, there is sufficient evidence to find that the Domain Name was registered in bad faith”. See also Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods WIPO Case No. D2016-0256 where the Panel stated “The Panel considers it reasonable to infer that the Respondent was aware of the Complainants' rights in the common law trademark HALLE BERRY when registering the disputed domain name in 1997, given Ms. Berry’s fame and the substantial goodwill which she had generated in her personal name by that date, commencing in the mid-1980s. In the Panel’s opinion, the original use of the disputed domain name to generate traffic resulting from interest in the Complainants’ well-known trademark, such that the Respondent would benefit from a corresponding increase in advertising revenue or increased clicks on sponsored links, shows an intent on the part of the Respondent to target the Complainants’ rights for commercial gain. These factors point firmly in the direction of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy”. In the present case there is no evidence that the Disputed Domain Name has ever been directly linked to a website with its own substantive content. It has at various times been linked to Registrar provided landing pages or redirected to other third party websites, or used to link to parking pages with presumably algorithmically generated links to third party pages. The earliest available archive record for the contents of a linked website (from “www.archive.com”) is dated January 22, 2011, and shows a parking page with links to third party content, mainly appearing to be links to websites containing TV and entertainment related content. There is no evidence that the Disputed Domain Name has been used in any other way.
page 6 Insofar as the Disputed Domain Name has been linked to parking pages with algorithmically generated links to third party pages (with a link to “get this domain”) the Panel concludes that paragraph 4(b)(iv) of the Policy applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s trade mark. The Panel infers that some Internet users, once at this website will follow the provided links and “click through” to other site and some revenue is likely to be generated as a result. The Panel infers the parking website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. See also WIPO Overview 3.0 section 3.5: “Can third-party generated material ‘automatically’ appearing on the website associated with a domain name form a basis for finding bad faith? Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.” Even if the present case was to be regarded as a case of “passive holding” where the Disputed Domain Name has not been substantively used at all the Panel would still conclude that it had been registered and used in bad faith. In this regard see WIPO Overview 3.0 at section 3.3 as follows: “Can the ‘passive holding’ or non-use of a domain name support a finding of bad faith? From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. Passive holding can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. The Panel cannot conceive of any good faith use to which the Disputed Domain Name could be put given its correspondence to the First Complainant’s distinctive and very famous name. Applying the principles set out in WIPO Overview 3.0 as described above and in the above noted UDRP decisions the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled The Panel finds that the Complainant has established the third element of the Policy.
page 7 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 be transferred to the Complainant /Nick J. Gardner/ Nick J. Gardner Sole Panelist Date: June 24, 2025
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