District Court awards $400,000 in three-year intellectual property dispute

By Chandra Lye | Feb 21, 2019

MIAMI--A Florida District Court has granted a plaintiff a statutory award of $400,000 in a dispute over domain names. 

Judge Federico Moreno also advised the domain names in question be handed over to the plaintiffs. 

According to the court decision, Vacation Store and Palace Holdings entered into a wholesaler agreement in 2012 in which Vacation Store was hired to book rooms at Palace Resorts. As part of the contract, the unauthorized use of Palace Holding trademarks, including using “confusingly similar domain names” was grounds for terminating the agreement. 

Media Insight began registering domain names that were very close to Palace Resorts properties, however, and Vacation Stores used these domains to sell reservations. 

In March 2014, Palace sent a letter through its lawyers to Vacation that terminated their agreement because of the domain names usage. Vacation was asked to “cease and desist using Palace Holdings’ protected marks,” according to the court decision.

In response, Vacation sent Palace a proposal for a domain-names licensing agreement. 

“The proposed agreement sought payment from Palace Holdings in exchange for transferring the challenged domain names,” the court decision stated.

Rather than sign, Palace sent a final cease-and-desist letter in June 2015.

Once the issue hit the courts, Palace Resorts was partially granted its motion for summary judgment, and it decided to dismiss its other claims. Although a trial was still granted, the court agreed with the plaintiff that no trial was needed. Rather, the parties were asked to submit briefs and as a result, the district court decided that the Palace Resorts "was entitled to injunctive relief, statutory damages, and reasonable attorneys’ fees and costs.” 

Although they had argued for a bench trial previously, the defendants now seek a jury trial. The court determined that they waived their right to a jury trial, however. 

“While defendants argued in favor of a live bench trial, they never once raised the issue of a jury trial,” the court decision stated. “Accordingly the court finds that the defendants clearly and unequivocally waived their right to a jury trial by failing to raise, or otherwise object to, the issue at Calendar Call.”

In addition to granting the plaintiffs statutory damages of $10,000 per domain name, the plaintiffs were given until the end of March to file a separate claim for attorneys' fees and costs. 

Judge Moreno issued the court decision Feb. 15 in the U.S. District Court for the Southern District of Florida.

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