July 14, 2015

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Wyche Inside IP
By Troy A. Tessier

The Lanham Act, which provides federal trademark protection, also includes certain cyberpiracy prevention provisions designed to protect people and companies from the wrongful registration and use of internet domain names that deserve trademark protection.  Congress passed the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d), in 1999.  Under its provisions, a person who, with a bad faith intent to profit from the mark, registers or uses an internet domain name that is identical to or confusingly similar to a distinctive mark, may be liable to the owner of the mark for damages of up to $100,000 per domain name.   The main purpose of this Act was to prevent people from registering popular domain names of well-known brands, like Panasonic or Coca-Cola, and then trying to profit from those names by selling them to the trademark owner.

What does cybersquatting have to do with Jeff Dunham, you ask?  Well, Paige Dunham is the ex-wife of Jeff Dunham, the famous ventriloquist and comedian.  The pair divorced in 2010.  IN December 2011, Jeff Dunham got engaged to Audrey Murdick, a personal trainer, fitness competitor, and nutrition consultant, and the two married in October 2012.  However, according to a lawsuit filed earlier this year in California (Case No. 2:15-cv-00422), Paige Dunham, in a prescient move, apparently went ahead and registered the following domain names on January 23, 2012:  AudreyDunham.com, AudreyDunham.net, AudreyDunham.us, and AudreyDunham.biz, all before the nuptials between Jeff Dunham and Audrey Murdick (now Audrey Dunham).  Meanwhile, on January 31, 2012, Audrey Murdick began the process of registering a federal trademark in the name, “Audrey Dunhaml”   Upon learning of the registration of the domain names by Paige, Audrey requested that the domains be turned over to her.  According to the lawsuit, Paige refused, but offered to sell the names for a payment in the tens of thousands for each name.

The drama continues.  The interesting legal issue here is this – the cybersquatting statute examines whether a mark is distinctive at the time of registration of the domain name at issue.  Will Ashley Dunham be able to prove that the “Ashley Dunham” mark was distinctive before she ever took that name?  While alleged conduct certainly does not appear to be commendable, it may well not be actionable under the circumstances.  Stay tuned.