U.S. judge grants summary judgment against Florida hospitality companies over trademark infringement

By Karen Kidd | Jun 29, 2018

MIAMI (Florida Record) — A federal judge recently found in favor of Mexican and a Panamanian hospitality companies intellectual property case when he granted summary judgment against two Florida-based companies accused of trademark infringement.

MIAMI (Florida Record) — A federal judge recently found in favor of Mexican and a Panamanian hospitality companies intellectual property case when he granted summary judgment against two Florida-based companies accused of trademark infringement.

U.S. District Court Judge Federico A. Moreno, on the bench in Florida's Southern District Miami Division, granted a motion for summary judgment filed by Palace Resorts, one of two plaintiffs in the case, on its claim that the defendants had violated the Anti-Cybersquatting Consumer Protection Act. "The court finds Palace Resorts has carried its burden of proof and is entitled to judgment as a matter of law on this claim," Moreno said in his 18-page order issued June 12.

Moreno apparently was not impressed by defense efforts to ward off the summary judgment he handed down in favor of plaintiffs. "In a final attempt to avoid summary judgment, the defendants raise [again] defenses that this court has already rejected: (1) genericness; (2) fair use; (3i) acquiescence; (4) laches; and (5) prior use," Moreno said in his order.

"Magistrate Judge John J. O'Sullivan thoroughly addressed and dismissed each of these affirmative defenses in his report and recommendation on plaintiffs' motion for preliminary injunction, which this court adopted," Moreno wrote. "The defendants have offered no evidence to alter O'Sullivan's analysis or his conclusions, so this court need not explain for a second time why defendants' defenses lack merit. Because O'Sullivan's determinations apply with equal force today, the defendants' affirmative defenses fail."


Palace Resorts, incorporated in Mexico, owns and operates hotels, resorts, and spas, and sells wedding, meeting, and vacation packages, according to the background portion of Moreno's order. Fellow plaintiff, the Heron Development Corporation, based in Panama City, Panama, is a wholesale commercial retailer of unsold resort inventory for resorts, including some owned by Palace Resorts. Palace Resorts holds exclusive license for use, enforcement and protection for its trademarks in the U.S.

Heron Development and Palace Resorts sued Coral Gables-based Vacation Tours, Miami-based Media Insight Group, and the Florida companies officers Rosanna M. Mendez and George A. Alvarez, alleging trademark infringement in the seven-count second amended complaint filed with the court. The complaint alleged violations of The Lanham Act, Florida's Registration and Protection of Trademarks Act and Florida's Deceptive and Unfair Trade Practices Act.

Evidence in the case illustrated "defendants' bad-faith intent" to profit off plaintiff trademarks, Moreno said in his order. [The] defendants incorporated the trademarks into their registered domain names, none of the infringing domain names consisted of any of the defendants' legal names, the domain names were used to divert web traffic and they knew what they were doing would cause harm to Palace Resorts, according to the order. 

"Accordingly, Palace Resorts has shown the defendants acted in bad faith as defined by the anti-cybersquatting act," Moreno said in his order. "Accordingly, Palace Resorts has satisfied all four elements of a cybersquatting claim against Media lnsight, Vacation Stores, George Alvarez and Rosanna Mendez."

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