The Georgia IP Litigation Blog monitors patent, trademark, copyright, and trade secret cases pending in Georgia federal district courts and in the U.S. Court of Appeals for the 11th Circuit, based in Atlanta. The blog alerts readers to initiation of such cases in the district courts and summarizes relevant orders and opinions from each covered court.
Clark Equipment Company d/b/a Bobcat Company, based in West Fargo, North Dakota but stated to manage its trademark portfolio from its Atlanta corporate office (“Bobcat Company”), filed an anticybersquatting complaint in the Northern District of Georgia, asserting that Mr. Ted Corriher improperly registered domain names using Bobcat Company’s BOBCAT® trademarks.
Bobcat Company is the owner of record of several federal registrations for the trademark BOBCAT®, used for skid-steer loaders, attachments to such loaders, and related goods and services.For example, Bobcat Company is the owner of record of U.S. Trademark Reg. No. 890,034, registered in 1970 for “self-propelled vehicle having front end mounting means for various attachments actuated by the power means of said vehicle.”The complaint lists bobcat.com, bobcatdealer.com, and bobcatstore.com as being among domain names that Bobcat Company registered using the BOBCAT Marks.The complaint alleges, among other things, that “Bobcat Company sells millions of dollars worth of machinery and equipment under the BOBCAT Marks each year,” that “BOBCAT brand skid-steer loaders hold 40 percent of the U.S. market share for skid-steer loaders,” and that “the BOBCAT Marks are extremely well-known, if not famous, in the United States for compact equipment.”The Bobcat Company asserts that it is well known for its BOBCAT brand attachments, which are a significant portion of its business.
As of the 50th anniversary of the Bobcat in 2008, Clark had manufactured 750,000 skid-steer loaders since their inception in 1958, according to paragraph 14 of the complaint. The complaint reports national attention, including appearances on the television show Extreme Makeover: Home Edition (where the skid-steer loaders performed a square dance), a coffee-table book, and a dedicated YouTube channel.A 9 minute YouTube video of the history of the Bobcat Square Dance can be found at http://www.youtube.com/watch?v=u25iBRtzEg4 (featuring information that the dance was regularly performed on the Captain Kangaroo Show).A shorter version of an entire dance can be viewed at http://www.youtube.com/watch?v=B4lKbqsW7HE.
Mr. Corriher, according to the complaint, is an individual who sells attachments for compact equipment through “an online implement business” known as EverythingAttachments.com, based in Newton, North Carolina.Bobcat Company asserts that Mr. Corriher, despite not ever having been an authorized BOBCAT dealer, registered at least 10 domain names (collectively called “Infringing Domain Names” in the complaint) incorporating the BOBCAT trademark, including:
The complaint makes the following factual allegations and indicates that the facts alleged demonstrate Corriher’s knowledge of the Bobcat Company and the BOBCAT Marks at the time he registered the above domain names, or at other times preceding the filing of the complaint:
Corriher previously worked for a dealership of a Clark competitor, New Holland.
Corriher had sought to become a BOBCAT dealer.
Corriher used a privacy protection service to register the accused domain names.
Bobcat Company had previously brought a National Arbitration Forum (“NAF”) complaint under the Uniform Domain Name Dispute Resolution Policy against Corriher’s use of the domain name – bobcatattachmentsonline.com – which it won.
Corriher registered the newbobcats.com domain name in 2011, “long after” the NAF ruled in Bobcat Company’s favor.
Corriher failed to respond to pre-litigation requests to transfer the Infringing Domain Names to Bobcat Company.
The complaint alleges that Corriher registered the domain names incorporating BOBCAT Marks and used them to direct web traffic to his EverythingAttachments.com website, and parked other registered domain names in GoDaddy’s “cashparking system.”Bobcat Company accuses Corriher of willfully violating 15 U.S.C. § 1125(d), the Anticybersquatting Consumer Protection Act, conduct which has also been called “cyberpiracy.”
Bobcat Company seeks injunctive relief and a transfer of the Infringing Domain Names to it.Additionally, Bobcat Company seeks “statutory damages of not less than $1,000 and not more than $100,000 per domain name, as the Court determines just under 15 U.S.C. § 1117(d).” Bobcat Company seeks the maximum in that range due to “the willful and wanton nature of Mr. Corriher’s wrongful acts.”Finally, Bobcat Company requests a declaration that the case is “exceptional” and an award of attorneys’ fees under § 1117 based on that declaration.
The case is Clark Equipment Company v. Ted Corriher, No. 1:12-cv-4127-RWS, filed 11/18/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Richard W. Story.
Note:The contributions of co-author Kirk Watkins to the foregoing summary are gratefully acknowledged.