United States District Court, S.D. Florida, Miami Division
HERON DEVELOPMENT CORPORATION, a foreign corporation, and PALACE RESORTS, S.A. de C.V., a foreign corporation, Plaintiffs,
v.
VACATION TOURS, INC., MEDIA INSIGHT GROUP, INC., ROSANNA M. MENDEZ, and GEORGE A. ALVAREZ, Defendants.
ORDER GRANTING PLAINTIFF'S MOTION FOR PARTIAL
SUMMARY JUDGMENT
FEDERICO A. MORENO UNITED STATES DISTRICT JUDGE
This is
an intellectual property case involving alleged violations of
The Lanham Act, Florida's Registration and Protection of
Trademarks Act, and Florida's Deceptive and Unfair Trade
Practices Act. The two Plaintiffs-the owner and the exclusive
licensee of certain hotel-and resort-related
trademarks-contend that Defendants infringed those trademarks
by registering and transacting business on domain names
strikingly similar to the protected marks. Plaintiffs filed a
seven-count Verified Second Amended Complaint challenging
Defendants' conduct.
Plaintiff
Palace Resorts, S.A. de C.V. moves for summary judgment on
its claim in Count I that Defendants' registration and
use of certain domain names violated the Anti-Cybersquatting
Consumer Protection Act. See 15 U.S.C. §
1125(d). The Court finds that Palace Resorts has carried its
burden of proof and is entitled to judgment as a matter of
law on this claim. Accordingly, it is ADJUDGED that Palace
Resorts' motion for summary judgment on Count I is
GRANTED.
I.
Background
A.
Parties and Relevant Non-Parties
1.
Relevant Non-Party
a.
Palace Holding, S.A. de C.V. ("Palace
Holdings")
Palace
Holdings is a Mexican corporation in the hospitality
industry. It owns and operates hotels, resorts, and spas, and
sells wedding, meeting, and vacation packages. Although not a
party to this case, it has conducted business with Plaintiff
and Defendants at various times. Defendant Vacation Tours,
Inc. previously had a wholesaler relationship with Palace
Holdings until Palace Holdings terminated the agreement in
2014. Palace Holdings previously licensed the trademarks at
issue in this case to Heron. However, in February 2016,
Palace Holdings assigned those trademarks and the licensing
agreement to Palace Resorts, S.A. de C.V.
2.
Plaintiffs
a.
Palace Resorts, S.A. de C.V. ("Palace
Resorts")
Palace
Resorts is a Mexican corporation in the hospitality industry.
It owns and operates hotels, resorts, and spas, and sells
wedding, meeting, and vacation packages. Heron currently
holds the exclusive license to use, enforce, and protect
certain Palace Resorts trademarks in the United States.
b.
Heron Development Corporation
Heron
is a Panamanian company with its principal place of business
in Panama City, Panama. It is a wholesale commercial retailer
of unsold resort inventory for resorts in Mexico and the
Caribbean, including the following properties owned by Palace
Resorts:
(1) Beach Palace - located in Cancun, Mexico (opened October
1985);
(2) Cozumel Palace - located in Cozumel, Mexico (opened in
May 2005);
(3) Isla Mujeres Palace - located in Isla Mujeres, Mexico
(opened in January 2007);
(4) Le Blanc Spa Resort - located in Cancun, Mexico (opened
in August 2005);
(5) Moon Palace Gold & Spa Resort - located in Cancun,
Mexico (opened January 1997);
(6) Moon Palace Jamaica Grand - located in Ocho Rios, Jamaica
(opened in June 2015);
(7) Playacar Palace - located in Playa del Carmen, Mexico
(opened in December 2005); and
(8) Sun Palace - located in Cancun, Mexico (opened in
December 1990).
Heron
and Palace Holdings entered into an exclusive license
agreement on December 5, 2015. The contract granted Heron an
exclusive license to use certain trademarks owned by Palace
Holdings in the United States for the purpose of marketing
and promoting the eight resort properties listed above. The
licensing agreement also granted Heron the exclusive right to
enforce and protect the trademarks from dilution and
infringement in the United States. On February 1, 2016,
Palace Holdings assigned the trademarks as well as the
licensing agreement with Heron to Palace Resorts.
3.
Defendants
a.
Vacation Tours, Inc. ("Vacation Store")
Vacation
Tours, Inc.-which operates as "Vacation Store of
Miami" and "Vacation Store"-is a Florida
Corporation with its principal place of business in Coral
Gables, Florida. For a period of time, Vacation Store
maintained a wholesaler relationship with Palace Holdings.
b.
Media Insight Group
Media
Insight Group, Inc. is a Florida Corporation with its
principal place of business in Miami Beach, Florida. It is
the registrant of forty domain names that allegedly infringe
Palace Resorts' trademarks.
c.
George A. Alvarez
George
A. Alvarez is the registered agent and officer/director of
Media Insight.
d.
Rosanna M. Mendez Rosanna M. Mendez is an
officer/director of ...