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Case 0:12-cv-61827-UU Document 1 Entered on FLSD Docket 09/18/2012 Page 1 of 12
UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
THIRTY-EIGHT STREET, INC., a Florida
corporation, and VANTAGE HOSPITALITY
GROUP, INC., a Florida corporation,
Plaintiffs, CASE NO. ____________________
v.
JAI UMIYA MATA, LLC, a Texas limited
liability company, and JASHAVANT D. PATEL,
NIKHIL VYAS, and DINESH PATEL, individuals,
Defendants.
_____________________________________/
COMPLAINT FOR COMPENSATORY DAMAGES, TREBLE DAMAGES,
INJUNCTIVE RELIEF, AND ATTORNEY FEES
Plaintiffs, THIRTY-EIGHT STREET, INC. (“TESI”) and VANTAGE HOSPITALITY
GROUP, INC. (“VANTAGE”), through their attorneys, file this Complaint against Defendants
JAI UMIYA MATA, LLC a/k/a JAI UMIYA MATA LLC (“JAI UMIYA”), JASHAVANT D.
PATEL, NIKHIL VYAS, and DINESH PATEL (collectively, “Defendants”) and state:
INTRODUCTION
1. This action arises from Defendants’ infringement and counterfeiting of Plaintiff
TESI’s registered AMERICAS BEST VALUE INN service mark following Defendant JAI
UMIYA’s breach of its licensing agreement with Plaintiff VANTAGE. In this action, Plaintiffs
seek compensatory damages, treble damages, injunctive relief and attorneys’ fees against
Defendants for violations of the federal Lanham Act (Counts I, II, III) and compensatory
damages against Defendant JAI UMIYA for breach of contract (Count IV).
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JURISDICTION AND VENUE
2. This Court has subject matter jurisdiction of this action pursuant to 15 U.S.C.
§§ 1114, 1116, 1117, 1118, and 1121; 28 U.S.C. § 1331; and 28 U.S.C. §§ 1338(a), because this
case involves a federal question arising under the Lanham Act, 15 U.S.C. § 1051, et seq.
3. Personal jurisdiction and venue are proper in this Court because: (a) the contract
entered into between Plaintiff VANTAGE and Defendant JAI UMIYA calls for jurisdiction and
venue relative to all disputes under the contract to lie in counties within this District; (b) upon
information and belief, Defendants reside in this District, as that term is defined in 28 U.S.C.
§ 1391(c), because Defendants promote and market the services of Defendants in this District in
violation of the Lanham Act and thereby are subject to personal jurisdiction in this District, 28
U.S.C. § 1391(b)(3); and (c) Plaintiffs are situated in this District, and are being harmed in this
District by the infringing conduct of Defendants, 28 U.S.C. § 1391(b)(2).
PARTIES
4. Plaintiff TESI is a corporation organized under the laws of the State of Florida,
having its principal place of business at 3300 N. University Drive, Suite 500, Coral Springs,
Florida 33065.
5. Plaintiff VANTAGE is a corporation organized under the laws of the State of
Florida, having its principal place of business at 3300 N. University Drive, Suite 500, Coral
Springs, Florida 33065.
6. Upon information and belief, Defendant JAI UMIYA is a limited liability
company which is organized and doing business under the laws of the state of Texas, having its
principal place of business at 8800 Airport Blvd, Houston, Texas 77061-3400.
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7. Upon information and belief, Defendants JASHAVANT D. PATEL, NIKHIL
VYAS, and DINESH PATEL are and/or at all relevant times were managers of Defendant JAI
UMIYA and are directly responsible for causing Defendant JAI UMIYA to engage in the
infringing activities set forth in Counts I, II and III.
PLAINTIFFS’ RIGHTS IN THE MARK
8. Plaintiff TESI is the owner of U.S. Service Mark Registration No. 3216237 (the
“‘237 Registration”) for the mark AMERICAS BEST VALUE INN BY VANTAGE and Design
(the “Mark”) in connection with hotel and motel services.
9. Plaintiff VANTAGE is the exclusive worldwide licensee of all rights in and to the
Mark.
10. Plaintiff VANTAGE, by itself and through its predecessor, has used the Mark
continuously in interstate commerce from at least as early as November 30, 2004 in connection
with various hospitality services, including, but not limited to, hotel and motel services, and the
Mark continues in use today to identify such services.
11. Plaintiff VANTAGE advertises and sells its hospitality services under the Mark
throughout the United States, including, but not limited to, Florida and this District.
12. Because of the long and continuous use of the Mark in commerce, including
advertising and provision of services under the Mark, consumers throughout the United States
have come to recognize the Mark as a symbol of the services offered by Plaintiff VANTAGE
under the Mark.
THE LICENSING AGREEMENT BETWEEN VANTAGE AND JAI UMIYA
13. Plaintiff VANTAGE operates a brand membership program under its
“AMERICAS BEST VALUE INN” brand (“Program”) under which providers of hospitality
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services receive from Plaintiff VANTAGE a license to use the Mark in connection with
hospitality services, as well as other benefits, in exchange for payments and compliance with
other covenants, such as maintaining a certain level of quality of the hospitality accommodations
offered in connection with the Mark.
14. On or about March 4, 2008, Defendant JAI UMIYA applied to participate in the
Program and use the Mark at the address of 8800 Airport Blvd, Houston, Texas 77061-3400 (the
“Branded Property”). On March 18, 2008, Plaintiff VANTAGE accepted Defendant JAI
UMIYA’s application. Thereupon, Defendant JAI UMIYA agreed to the terms in the application
for membership in the Program. Defendant JAI UMIYA’s Brand Membership Application and
Agreement for the Branded Property (the “Brand Agreement”) is attached hereto as Exhibit A.
15. The Brand Agreement licensed the use of the Mark to Defendant JAI UMIYA in
connection with offering and providing hospitality services. Among other obligations, the Brand
Agreement required Defendant JAI UMIYA to pay to Plaintiff VANTAGE an initial fee,
membership, advertising and annual conference fees, and certain additional fees.
16. After entering into the Brand Agreement and becoming a member in the Program,
Defendant JAI UMIYA used the Mark, including displaying the Mark on signs in connection
with offering and providing hospitality services at the Branded Property.
17. As a result of Defendant JAI UMIYA’s failure to fulfill its obligations under the
Brand Agreement, Plaintiff VANTAGE terminated the Brand Agreement on May 16, 2012 (the
“Termination Date”) and notified Defendants of same. A copy of the May 16, 2012 termination
letter is attached hereto as Exhibit B.
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18. Within 30 days of the Termination Date, JAI UMIYA was required by the Brand
Agreement to cause the removal of signage bearing the Mark, corresponding to June 16, 2012
(the “Grace Period”).
19. Following Plaintiff VANTAGE’s termination of the Brand Agreement,
Defendants willfully continued use of the Mark in connection with offering and providing
hospitality services at the Branded Property. In particular, Defendant JAI UMIYA displayed one
or more signs, furniture, or fixtures bearing the Mark at the Branded Property without Plaintiffs’
authorization.
20. By letters dated July 25, 2012 and August 20, 2012, Plaintiff VANTAGE notified
Defendants of the continued unauthorized use of the Mark and demanded that they cease and
desist from such use. (Copies of the letters are attached hereto as Exhibit C). Despite these
demands, the terms of the Brand Agreement, and the demand to cease and desist in the
termination letter, Defendants continued to willfully use the Mark without Plaintiffs’ consent.
21. Defendants’ use of the Mark has caused or will likely cause confusion in the
marketplace. Such use of the Mark has caused or will likely cause confusion, mistake or
deception with respect to the association of Defendants with Plaintiffs, or as to the origin,
sponsorship or approval of Defendants’ services by Plaintiffs. Further, Defendants’ use of the
Mark in commercial advertising and promotion misrepresents the nature, characteristics,
qualities and origin of Defendants’ services.
22. Upon information and belief, at all relevant times, Defendants JASHAVANT D.
PATEL, NIKHIL VYAS, and DINESH PATEL directly controlled the continued unauthorized
use of the Mark by Defendant JAI UMIYA, and directed, participated in, ratified, or otherwise
assisted the unauthorized, and hence infringing, use of the Mark. As the active moving force
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behind Defendant JAI UMIYA’s infringement, Defendants JASHAVANT D. PATEL, NIKHIL
VYAS, and DINESH PATEL are jointly and severally liable for Defendant JAI UMIYA’s
infringement.
23. Plaintiffs have been, and continue to be, injured by Defendants’ unauthorized and
unlawful use of the Mark. Such infringement has caused, and continues to cause, irreparable
harm to Plaintiffs and Plaintiffs’ goodwill and reputation under the Mark.
COUNT I
INFRINGEMENT OF FEDERALLY REGISTERED SERVICE MARK
(15 U.S.C. § 1114)
(ALL DEFENDANTS)
24. Plaintiffs repeat and reallege each of the allegations contained in Paragraphs 1
through 23 of this Complaint as if fully set forth herein.
25. Defendants have infringed Plaintiff TESI’s rights in the ‘237 Registration in
violation of 15 U.S.C. § 1114.
26. Given the notices provided to Defendants by Plaintiff VANTAGE, such activities
are, and remain, with full knowledge of Plaintiffs’ rights, willful and intentional.
27. These willful and intentional acts of infringement have caused and are causing
great and irreparable injury and damage to Plaintiffs’ business and goodwill and reputation in an
amount that cannot be ascertained at this time and, unless restrained, will cause further
irreparable injury and damage, leaving Plaintiffs with no adequate remedy at law.
WHEREFORE, Plaintiffs demand judgment against Defendants, jointly and severally,
for the following:
a) a temporary and permanent injunction enjoining Defendants, their officers,
directors, servants, agents, employees, attorneys and representatives, and each of them, and those
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parties acting in concert or participating with them, from using any more marks confusingly
similar to the Mark in connection with the advertising or sale of their services;
b) an order directing that Defendants remove all signage and deliver up for
destruction all materials and matter in their possession, custody or under their control that bear
any mark or any other thing calculated or likely to cause confusion, deception or mistake in the
marketplace with regard to the Mark, including, without limitation, all signage, and apparatus
and electronically stored information capable of making any signage, advertising and
promotional materials;
c) an accounting of profits Defendants have wrongfully obtained from their use of
the Mark, 15 U.S.C. § 1117(a);
d) compensatory damages, costs, and attorneys’ fees, 15 U.S.C. § 1117(a); and
e) such other relief as this Court deems proper.
COUNT II
COUNTERFEITING OF FEDERALLY REGISTERED
SERVICE MARK 15 U.S.C. § 1116(d)
(ALL DEFENDANTS)
28. Plaintiffs repeat and reallege each of the allegations contained in Paragraphs 1
through 23 of this Complaint as if fully set forth herein.
29. This is an action for counterfeiting of a federally registered mark under 15 U.S.C.
§ 1116(d).
30. Defendants’ unauthorized use of the Mark constitutes counterfeiting as defined by
15 U.S.C. § 1116(d)(1)(B).
WHEREFORE, Plaintiffs demand judgment against Defendants, jointly and severally,
for the following:
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a) a temporary and permanent injunction enjoining Defendants, their officers,
directors, servants, agents, employees, attorneys and representatives, and each of them, and those
parties acting in concert or participating with them, from using any more marks confusingly
similar to the Mark in connection with the advertising or sale of their services;
b) an order directing that Defendants remove all signage and deliver up for
destruction all materials and matter in their possession, custody or under their control that bear
any mark or any other thing calculated or likely to cause confusion, deception or mistake in the
marketplace with regard to the Mark, including, without limitation, all signage, and apparatus
and electronically stored information capable of making any signage, advertising and
promotional materials;
c) an accounting of profits Defendants have wrongfully obtained from their use of
the Mark, 15 U.S.C. § 1117(a);
d) compensatory damages, treble damages, costs, and attorneys’ fees, 15 U.S.C.
§ 1117(a)(b);
e) statutory damages between $1,000 and $200,000 per counterfeit mark, and up to
$2,000,000 per counterfeit mark for willful use, U.S.C. § 1117(a); and
f) such other relief as this Court deems proper.
COUNT III
STATUTORY INFRINGEMENT OF SERVICE MARK
15 U.S.C. § 1125
(ALL DEFENDANTS)
31. Plaintiffs repeat and reallege each of the allegations contained in Paragraphs 1
through 23 of this Complaint as if fully set forth herein.
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32. This is an action for false designation of origin in violation of 15 U.S.C.
§ 1125(a).
33. Defendants’ use of the Mark constitutes a false designation of origin and/or false
description or representation, which is likely to deceive consumers and prospective customers
into believing that Defendants’ services originate from, or are licensed by, sanctioned by,
sponsored by, or in some way affiliated with Plaintiffs in violation of 15 U.S.C. § 1125(a).
WHEREFORE, Plaintiffs demand judgment against Defendants, jointly and severally,
for the following:
a) a temporary and permanent injunction enjoining Defendants, their officers,
directors, servants, agents, employees, attorneys and representatives, and each of them, and those
parties acting in concert or participating with them, from using any more marks confusingly
similar to the Mark in connection with the advertising or sale of their services;
b) an order directing that Defendants remove all signage and deliver up for
destruction all materials and matter in their possession, custody or under their control that bear
any mark or any other thing calculated or likely to cause confusion, deception or mistake in the
marketplace with regard to the Mark, including, without limitation, all signage, and apparatus
and electronically stored information capable of making any signage, advertising and
promotional materials;
c) an accounting of profits Defendants have wrongfully obtained from their use of
the Mark, 15 U.S.C. § 1117(a);
d) compensatory damages, costs, and attorneys’ fees, 15 U.S.C. § 1117(a); and
e) such other relief as this Court deems proper.
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COUNT IV
BREACH OF CONTRACT
(DEFENDANT JAI UMIYA)
34. Plaintiff repeats and realleges each of the allegations contained in Paragraph 1
through 23 of this Complaint as if fully set forth herein.
35. Upon termination of the Brand Agreement and Defendant JAI UMIYA’s
membership in the Program, Defendant JAI UMIYA was required under the Brand Agreement to
do the following: (a) remove the Mark from any sign, furniture, fixtures or other visible thing
within thirty (30) days; (b) pay $150 per day for each day that it has failed to remove the Mark
after the expiration of the Grace Period; and (c) immediately pay the balance of any fees due
under the Brand Agreement.
36. Defendant JAI UMIYA has breached the Brand Agreement by: (a) failing and
refusing to discontinue use of the Mark, as well as failing and refusing to remove the Mark from
all signs, furniture, fixtures and other visible things; (b) failing to pay the daily $150 fee for
continuing to display the Mark since at least June 16, 2012 to the present (the “Liquidated
Damages”); and (c) failing to pay the balance of fees due under the Brand Agreement.
37. Defendant JAI UMIYA owes Plaintiff the following sums arising from Defendant
JAI UMIYA’s breach of the Brand Agreement:
38. Accelerated Fees for early termination of the Brand Agreement in the amount of
$12,996.00,
39. Delinquent (unpaid and past due) Fees under the Brand Agreement in the amount
of $28,912.40,
40. Liquidated Damages of $150 per day for failing to suspend use of the Mark
beginning June 16, 2012 corresponding to $14,100 through September 18, 2012.
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41. Plaintiff has additionally been damaged by Defendant JAI UMIYA’s breaches of
the Brand Agreement in an amount to be proven at trial.
42. For all amounts past due and owed by Defendant JAI UMIYA under the Brand
Agreement, Plaintiff is entitled to recover $25 or 1.5% interest per month in the unpaid amount,
whichever is greater. Under the Brand Agreement, Plaintiff VANTAGE is also entitled to
recover from Defendant JAI UMIYA Plaintiff’s attorneys’ fees incurred in connection with this
lawsuit.
WHEREFORE, Plaintiffs demand judgment against Defendant JAI UMIYA for the
following:
a) An order directing that Defendants remove all signage and deliver up for
destruction all materials and matter in their possession, custody or under their control that bear
any mark or any other thing calculated or likely to cause confusion, deception or mistake in the
marketplace with regard to the Mark, including, without limitation, all signage, and apparatus
and electronically stored information capable of making any signage, advertising and
promotional materials;
b) An order awarding to Plaintiff VANTAGE damages for breach of contract;
c) An order awarding prejudgment and post judgment interest; and
d) An award of Plaintiff VANTAGE’s costs and expenses, including, without
limitation, Plaintiff’s attorney’s fees incurred in this action.
JURY DEMAND
Plaintiffs hereby demand trial by jury on all issues so triable.
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Dated: September 18, 2012 Respectfully submitted,
By: /s/Carly A. Johnson
Steven I. Peretz (Fla. Bar. No. 329037)
Carly A. Johnson (Fla. Bar. No. 31052)
PERETZ CHESAL & HERRMANN, P.L.
201 S. Biscayne Blvd., Suite 1750
Miami, Florida 33131
Tel: 305-341-3000
Fax: 305-371-6807
Email: speretz@pch-iplaw.com
cjohnson@pch-iplaw.com
Counsel for Plaintiff, Thirty-Eight Street, Inc., a
Florida corporation, and VANTAGE Hospitality
Group, Inc., a Florida corporation
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