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Fabick, Inc. v. Fabco Equipment, Inc.

United States District Court, W.D. Wisconsin

May 7, 2017

FABICK, INC., Plaintiff,
v.
FABCO EQUIPMENT, INC., and JFTCO, INC., Defendants.

          OPINION AND ORDER

          WILLIAM M. CONLEY District Judge.

         In this 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 that motion.

         ALLEGATIONS OF FACT[1]

         A. Background

         The 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.

         Plaintiff 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.

         B. Fabick's Trademark, Service Mark and Domain Name

         At its 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.

         On 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.

         On December 31, 1997, FABCO and Joseph Fabick, Sr., sold 100% of the stock in Fabick to Jay Fabick (Joseph Fabicks son).

         C. Registration of Competing Domain Names

         In July 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.)

         Material to ACPA claim, plaintiff alleges that

• The domain name "fabickcat.com" was adopted long after the FABICK marks were registered and became distinctive.
• 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 ...

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