United States District Court, W.D. Wisconsin
OPINION AND ORDER
WILLIAM M. CONLEY District Judge.
case, plaintiff Fabick, Inc., asserts a claim of trademark
infringement and other related claims against defendants
FABCO Equipment, Inc., and JFTCO, Inc. Before the court is a
motion to dismiss plaintiff's claim against defendant
JFTCO for violation of the Anticybersquatting Consumer
Protection Act ("ACPA"), 15 U.S.C. § 1125(d),
on the basis that the allegations fail to meet the
requirements of Rules 8 and 12(b)(6). (Dkt. #42.) For the
reasons that follow, the court will grant that motion. Also
before the court is plaintiff's more recently-filed
motion for leave to amend its complaint to add a claim of
civil conspiracy against defendants. Finding plaintiff unduly
delayed in moving to amend its complaint, the court will deny
Fabick family has been involved in the business of selling
construction and agricultural equipment since 1917. In 1982,
Joseph Fabick, Sr., acquired two pre-existing Caterpillar
("CAT") dealerships serving Wisconsin and the Upper
Peninsula of Michigan. Those dealerships were ultimately
merged to become defendant FABCO Equipment, Inc. FABCO is in
the business of selling and renting equipment and technology
used in the construction, agriculture and related industries.
Defendant JFTCO acquired certain assets of FABCO on or about
July 1, 2015.
Fabick, Inc., was originally created in December 1993 as a
complementary business to FABCO. Fabick is in the business of
spray-on bedliners, sealants and coatings.
Fabick's Trademark, Service Mark and Domain Name
founding, FABCO owned 100% of Fabick's stock and shared
its customer lists, marketing personnel and product services
representatives to build Fabick's business. On March 25,
1994, Fabick filed a trademark application for the mark
"FABICK, " and on April 11, 1994, Fabick filed a
service mark application for the mark "FABICK." The
USPTO granted the service mark on August 22, 1995, and the
trademark on January 14, 1997.
December 4, 1995, Fabick also registered the domain name
"www.fabick.com." Shortly after that registration,
John Fabick Tractor Company, a CAT dealer operating in
Missouri and parts of Illinois, and an affiliate of defendant
JFTCO, also sought to register the domain name
"www.fabick.com." Upon learning that the name was
already registered to Fabick, John Fabick Tractor Company
approached defendant FABCO as the then controlling owner of
plaintiff Fabick to procure Fabick's domain name
registration, but FABCO refused.
December 31, 1997, FABCO and Joseph Fabick, Sr., sold 100% of
the stock in Fabick to Jay Fabick (Joseph Fabicks son).
Registration of Competing Domain Names
2015, FABCO rebranded its name to "FABICK CAT." A
web search for FABICK CAT reveals a domain name for
"fabickcat.com." Plaintiff Fabicks domain name
remains "fabick.com." JFTCO, or one of its
affiliates, have also registered the following domain names:
www.fabickcat.com, registered on February 17, 2004;
www.fabicktrucks.com, registered on February 19, 2013; and
www.fabickusedequipment.com, registered on May 31, 2013.
Plaintiff further alleges that in July of 2015, "the
websites associated with these domain names were updated to
expand the locations from Missouri and parts of Illinois to
also include locations in Wisconsin and the U.P." (Am.
Compl. (dkt. #32) ¶ 46.)
to ACPA claim, plaintiff alleges that
• The domain name "fabickcat.com" was adopted
long after the FABICK marks were registered and became
• The domain names are confusingly similar.
• JFTCO has a short history of providing goods and
services under the "FABICK CAT" brand name, and
only entered the Wisconsin market in or around July 2015.
• "JFTCO has acted in bad faith with the intent to
profit from the good will of Fabicks domain name and
registered Marks. In so doing, JFTCO has confused actual and
possible customers as to the source of goods and services,
and otherwise usurping the ...