Dorpan v. Hotel Melia, Inc.

• Decision Date: 31 March 2012
• Docket Number: Civil Nos. 09–1138 (GAG), 09–1188(GAG).
• Parties: DORPAN, S.L., Plaintiff, v. HOTEL MELIA, INC. et al., Defendants. Hotel Melia, Inc. et al., Plaintiff, v. Dorpan, S.L., et al., Defendants.
• Court: U.S. District Court — District of Puerto Rico

851 F.Supp.2d 398

DORPAN, S.L., Plaintiff,

v.HOTEL MELIA, INC. et al., Defendants.

Hotel Melia, Inc. et al., Plaintiff,

v.Dorpan, S.L., et al., Defendants.

Civil Nos. 09–1138 (GAG), 09–1188(GAG).

United States District Court, D. Puerto Rico.

March 31, 2012.

Federico Calaf–Legrand, Reichard & Calaf, Angel E. Rotger–Sabat, Maymi, Rivera & Rotger–Sabat, San Juan, PR, for Plaintiff/Defendants.

Jairo A. Mellado–Villarreal, Roxana Aquino–Segarra, Mellado & Mellado Villareal, San Juan, PR, Yadyra Manfredy–Ramos, Manfredy & Manfredy CSP, Ponce, PR, Liza Maria Delgado–Gonzalez, Mellado & Mellado Villareal, Caguas, PR, for Defendants.

OPINION AND ORDER

GUSTAVO A. GELPÍ, District Judge.

On November 22, 2008, Hotel Meliá, Inc. (“HMI”) filed suit against Dorpan, S.L. (“Dorpan”), Sol Meliá, S.A., (“Sol Meliá”) and Desarrolladora del Norte, S. en C., S.E. (“Desarrolladora”) (collectively “DSD”) in Court of First Instance in Ponce, Puerto Rico. ( See Civil No. 09–1188, Docket No. 1–1.) HMI alleged it was entitled to sole use of the term “Meliá” ¹ in relation to the hotel industry on the island of Puerto Rico. ( See id.) On February 27, 2009, DSD removed the case to federal court. ( See Civil No. 09–1188, Docket No. 1.) On February 12, 2009, Dorpan filed a complaint against HMI seeking declaratory judgment for the use of the term “Gran Meliá” to refer to its hotel located in Río Grande. ( See Civil No. 09–1138, Docket No. 1.) These two actions were consolidated on March 9, 2009. ( See Civil No. 09–1188, Docket No. 5.) Currently before the court is Dorpan's motion for summary judgment seeking enforcement of its federaltrademarks (Docket No. 44) and HMI's motion for partial summary judgment seeking to bar DSD's suit based on issue and claim preclusion (Docket No. 47). After reviewing the parties' submissions and applicable law, the court GRANTS DSD's motion for summary judgment (Docket No. 44) and DENIES HMI's partial motion for summary judgment (Docket No. 47).

I. Factual and Procedural Background

A. SOL MELIA

Sol Meliá is a public limited Spanish company with offices at Gremio Toneleros 24, Palma de Mallorca, Baleares, Spain. ( See Docket No. 45 at ¶ 1.) Sol Meliá was organized on June 24, 1986 under the name of Investman, S.A. ( See id. at ¶ 2.) Sol Meliá, its subsidiaries and affiliate companies are engaged in the management and operation of owned or rented hotels and vacation clubs. ( See id. at ¶ 3.) Sol Meliá is the largest hotel chain in Spain, the third largest in Europe, and the twelfth largest in the world. ( See id. at ¶ 4.) The beginnings of Sol Meliá date back to the mid1950's, when Gabriel Escarrer Juliá founded Hoteles Mallorquines, S.A. ( See id. at ¶ 7.) Hoteles Mallorquines S.A. was later acquired by Sol Meliá.

B. DORPAN

Dorpan is a Spanish company organized on or about July 31, 1991. ( See Docket No. 45 at ¶¶ 13–14.) Dorpan's principal business activity is to own, keep and license to Sol Meliá or Sol Meliá's subsidiaries and affiliates the trademark/service mark portfolio that the Sol Meliá hotel conglomerate uses worldwide. ( See Docket No. 45 at ¶ 15.) Dorpan is a subsidiary of Sol Meliá and acquired the trademark rights to the Meliá name from Organización Meliá S.A.

C. DESARROLLADORA

Desarrolladora is a special partnership formed, organized and doing business in accordance with the laws of Puerto Rico. ( See Docket No. 45 at ¶ 21.) Desarrolladora is a Sol Meliá company that owns a luxury resort hotel at Coco Beach, Río Grande, Puerto Rico and operates under the Gran Meliá service mark. ( See Docket No. 45 at ¶ 22.) Sol Meliá discontinued its all inclusive business model, and later upgraded the facilities and turned the property into a luxury resort under the Gran Meliá Puerto Rico brand. ( See Docket No. 45 at ¶ 25.)

D. HMI

HMI is a family corporation organized and doing business under the laws of Puerto Rico. ( See Docket No. 45 at ¶ 28.) HMI owns and operates a hotel at 75 Cristina Street, Ponce, Puerto Rico, named Hotel Meliá. ( See Docket No. 45 at ¶ 29.) HMI became incorporated under the laws of Puerto Rico on or around March 1, 1943. ( See Docket No. 45 at ¶ 30.) HMI currently owns or operates Hotel Meliá. ( See Docket No. 31.) This address is the only address HMI has ever used for its hotel business. ( See Docket No. 45 at ¶ 33.) HMI has never expanded their hotel business to another location in Puerto Rico, the continental United States, or elsewhere. ( See Docket No. 45 at ¶ 34.) On February 19, 1976, HMI filed a complaint at the Superior Court of Puerto Rico seeking declaratory judgment for sole use of the name Meliá in Puerto Rico (“1978 Case”). ( See Docket No. 45 at ¶ 42.)

HMI's general manager, Nicolás Albors stated that on or about the time the Superior Court ruled on the declaratory judgment, he asked his lawyer to apply for the registration of “Hotel Meliá” at the United States Patent and Trademark Office (“USPTO”). ( See Docket No. 45 ¶ 48.) However, neither HMI, nor its lawyer ever filed for the rights to the “Hotel Meliá” name. ( See Docket No. 45 at ¶ 48.)

E. Dorpan's U.S. Registrations

Dorpan owns the marks to Sol Meliá, Registration Numbers 3100367 and 3003619, Meliá Vacation Club, Registration Number 2966400, Me By Meliá, Registration Number 3518860, Gran Meliá, Registration Number 2124741, Meliá Hoteles, Registration Number 2133599, and Meliá Boutique Hotels, Registration Number 3237241. ( See Docket No. 49–11.) The Sol Group Corp. (“Sol Group”) is a Delaware corporation that became organized on October 25, 1988. ( See Docket No. 45 at ¶ 54.) The Sol Group is a wholly owned subsidiary of Sol Meliá. ( See Docket No. 45 at ¶ 55.) Sol Group negotiates and sells packages within the travel trade, including retailers and wholesalers, as well as travel and tour operators, for vacation packages in the Sol Meliá hotel chain, which includes hotels using the Meliá family of brands as well as Gran Meliá. ( See Docket No. 45 at ¶ 57.) Sol Group is also responsible for arranging and executing the publicity and advertisement of the Meliá family brand in the U.S. ( See Docket No. 45 at ¶ 59.) During the 1990's Sol Meliá managed or operated the Meliá Orlando Suites and Villas Hotel in Florida. ( See Docket No. 45 at ¶ 61.) Since 2004, Sol Meliá manages or operates the Sol Meliá Vacation Club. ( See Docket No. 45 at ¶ 63.) Sol Meliá, Desarrolladora, Dorpan and Sol Group are related companies within the meaning of 15 U.S.C. §§ 1055 and 1127.

F. Inmobiliaria Meliá

Around 1976, Inmobiliaria de Puerto Rico began to develop a hotel in Puerto Rico. ( See Docket No. 47–1 at ¶ 3.) HMI sent Inmobiliaria two letters requesting Inmobiliaria to discontinue using the name Meliá. ( See Docket No. 47–1 at ¶ 4.) On November 7, 1975, Inmobiliaria sent a letter to HMI stating Inmobiliaria had informed their central office in Madrid about the issue regarding the use of Meliá. ( See Docket No. 47–1 at ¶ 5.) HMI filed suit in the Superior Court of San Juan against Inmobiliaria. ( See Docket No. 47–1 at ¶ 6.) The Superior Court granted a default judgment in favor of HMI, stating HMI had, “the right to exclusive use in the area of hotels to the Meliá family through Hotel Meliá, Inc. throughout the entire territory of the Commonwealth of Puerto Rico, free from appropriation or use by defendant or their persons of the referred name Meliá and/or Hotel Meliá, be it in the form of hotel, apart-hotel, condo hotel or other similar or related form of business.” ( See Docket Nos. 47–1 at ¶ 7; 60–4 at 5.)

G. Meliá Trademark in Puerto Rico

In 1987, Sol Meliá or its predecessor organization—Hoteles Mallorquinos S.A. acquired the stocks of Hoteles Meliá S.A. with all its assets, and obligations. However, said sale of stock did not include the trademark Meliá. ( See Docket No. 47–1 at ¶ 8.) In 1987, Mr. Gabriel Escarrer acquired a license to use the trademarks of Hoteles Meliá S.A. in Spain from Organización Meliá S.A. ( See Docket No. 47–1 at ¶ 9.) On March 15, 1995 Dorpan—subsidiary of Sol Meliá—acquired from Organización Meliá S.A. the Meliá trademarks that were registered or that were pending registry in Spain, Puerto Rico and around the world. ( See Docket No. 47–1 at ¶ 10.) In 1997, Sol Meliá initiated a hotel project in Coco Beach, Río Grande, Puerto Rico. ( See Docket No. 47–1 at ¶ 12.) In 1998, Mr. Nicolás Albors sent a letter to Mr. Gabriel Escarrer notifying Hotel Meliá's opposition to the use of the name Meliá in the hotel name. ( See Docket No. 47–1 at ¶ 13.) In 2004, the hotel opened in Río Grande under the name “Paradisus Puerto Rico.” ( See Docket No. 47–1 at ¶ 14.) On March 20, 2007, Dorpan attempted to register the trademark Gran Meliá Puerto Rico Resorts & Villas with the Department of State of Puerto Rico, but HMI filed an opposition and Dorpan voluntarily withdrew its application. ( See Docket No. 47–1 at ¶ 15.)

II. Standard of Review

Summary judgment is appropriate when “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When considering a motion for summary judgment, the court must view the evidence in the light most favorable to the non-moving party and give that party the benefit of any and all reasonable inferences. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Moreover, at the summary judgment stage, the court does not make credibility determinations or weigh the evidence. Id.

The moving party bears the initial burden of demonstrating the lack of evidence to support the non-moving party's case. Celotex, 477 U.S. at 325, 106 S.Ct. 2548. “The movant must aver an absence of evidence to support the nonmoving party's case.” Maldonado–Denis v....