Fabick, Inc. v. JFTCO, Inc.
3:16-cv-00172
W.D. Wis.Jun 7, 2017Background
- Plaintiff Fabick, Inc. is the owner of registered FABICK trademark and the domain fabick.com (registered 1995) and sells spray-on bedliners, sealants, and coatings.
- Defendant FABCO Equipment, Inc. was a related Caterpillar dealer; JFTCO, Inc. acquired certain FABCO assets on July 1, 2015.
- JFTCO or its affiliates registered several domain names incorporating “fabick” (e.g., fabickcat.com in 2004, fabicktrucks.com in 2013, fabickusedequipment.com in 2013) and expanded website content to include Wisconsin and Michigan’s Upper Peninsula in July 2015.
- Fabick alleges JFTCO acted in bad faith to profit from Fabick’s marks and domain by registering confusingly similar domain names and soliciting customers in Fabick’s territory, asserting an ACPA claim against JFTCO and trademark claims against both defendants.
- Procedurally, JFTCO moved to dismiss Fabick’s ACPA claim for failure to plead bad-faith registration; Fabick later moved for leave to amend to add a civil conspiracy claim, which the court also considered.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Fabick plausibly alleged JFTCO registered domain names with bad-faith intent to profit under the ACPA | JFTCO’s affiliate tried to obtain fabick.com, then registered confusingly similar domains and later expanded use into Wisconsin/U.P., supporting an inference of bad faith | JFTCO registered domains years before any use in Wisconsin/U.P.; ACPA bad-faith requires squatting intent, not ordinary competitive or bona fide use | Dismissed: Fabick failed to plead sufficient facts to infer bad-faith intent to profit under ACPA |
| Whether the court should consider statutory ACPA factors at pleading stage | Fabick argued merits review inappropriate at motion to dismiss | JFTCO relied on §1125(d)(1)(B)(i) factors to show plaintiff’s allegations are insufficient | Court applied factors contextually to test plausibility and found allegations insufficient |
| Whether Harrods supports an inference of bad faith here | Fabick relied on Harrods for the proposition that expansion into overlapping territory can show bad faith | JFTCO distinguished Harrods: (1) domains were registered long before expansion; (2) parties are not direct competitors | Court found Harrods inapposite and agreed Harrods does not support the inference here |
| Whether to permit leave to amend to add civil conspiracy claim | Fabick sought to add conspiracy based on alleged coordinated plan around acquisition/branding | Defendants would be prejudiced and amendment was untimely; plaintiff had relevant discovery (unredacted APA) months earlier | Denied: plaintiff unduly delayed in seeking leave to amend |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard requires plausible factual allegations)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must raise right to relief above speculative level)
- Harrods, Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) (domain registrations expanding shared mark use into competitor territory may show ACPA bad faith)
- Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) (ACPA bad-faith element distinct from general trademark bad faith)
- Cincinnati Life Ins. Co. v. Beyrer, 722 F.3d 939 (7th Cir. 2013) (district court must accept well-pled facts and draw inferences for pleading-stage review)
- Land’s End v. Remy, 447 F. Supp. 2d 941 (W.D. Wis. 2006) (elements required to state ACPA claim)
- Flat Rate Movers Ltd. v. FlatRate Moving & Storage, Inc., 104 F. Supp. 3d 371 (S.D.N.Y. 2015) (distinguishing trademark bad faith from ACPA-specific bad-faith-to-profit requirement)