Grand Canyon Resort Corporation V. Grand Canyon West Ranch, Llc

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Venable, Campillo, Logan & Meaney, P.C. 1938 East Osborn Road Phoenix, Arizona 85016 Telephone (602) 631-9100 Facsimile (602) 631-4529 E-Mail [email protected] Michael F. Campillo (AZ Bar No 019014) Joseph R. Meaney (AZ Bar No.017371) Attorneys for Plaintiff

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UNITED STATES DISTRICT COURT

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DISTRICT OF ARIZONA

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GRAND CANYON RESORT CORPORATION, INC., DBA GRAND CANYON WEST Plaintiff,

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COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, TRADEMARK DILUTION, AND UNFAIR COMPETITION

vs.

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Case No.: 2:09-cv-00289

GRAND CANYON WEST RANCH, LLC,

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Defendant.

18 19 20 Plaintiff, by its undersigned attorneys alleges as follows:

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JURISDICTION AND VENUE

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1.

This is a complaint for Trademark Infringement, Unfair Competition, and False

Description arising under § 43 of the Lanham Act (15 U.S.C. § 1125(a)) (Unfair Competition and False Description). 2.

This Complaint is properly filed in respect to an actual controversy of which

this Court has subject matter jurisdiction under the Federal Lanham Act (15 U.S.C. §

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1125 et seq.) and 28 U.S.C. § 1338(a) and under the Federal Declaratory Judgment

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Act, 28 U.S.C.A. §§ 2201-02. The Court has supplemental jurisdiction to preside

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over the Arizona state law claims pursuant to 28 U.S.C. § 1338(b) and under 28

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U.S.C. § 1367.

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3.

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Company and its principal place of business is in the State of Arizona; this Court has

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personal jurisdiction over the Defendant.

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4.

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substantial part of the events or omissions giving rise to the claims occurred in this

Defendant Grand Canyon West Ranch, LLC is an Arizona Limited Liability

Venue is proper in this district under 28 U.S.C. §1391(b) and (c) because a

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district, a substantial part of the property that is the subject of the action is situated in

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this district, and the defendant maintains its principal place of business in this district.

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PARTIES

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5.

Plaintiff Grand Canyon Resort Corp. is a federally chartered corporation under

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Section 17 of the Indian Reorganization Act with an address of 893 Highway 66,

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Peach Springs, Arizona 86434.

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6.

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an Arizona limited liability company, with an address of 3750 E. Diamond Bar Ranch

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Rd., Meadview, Arizona 86444.

Upon information and belief, Defendant Grand Canyon West Ranch, LLC, is

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FACTUAL BACKGROUND

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7.

Hualapai (“Wal-a-pie”) Nation is, and at all times mentioned herein was, a

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federally recognized tribe with an address of P.O. Box 179, Peach Springs, Arizona

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86434.

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8.

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Grand Canyon in Arizona.

The Hualapai own and inhabit 108 miles along the south-western rim of the

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9.

On or before October of 1998, the Hualapai established Plaintiff Grand Canyon

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Resort Corporation, a Section 17 federal chartered corporation for the purposes of

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developing “Grand Canyon West” for the purposes of tourism.

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10.

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continuously operated the tourist destination referred to as “Grand Canyon West”, on

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their rim of the Grand Canyon.

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11.

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Grand Canyon West was $2.8 million. Plaintiff offers several tourism related services

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in interstate commerce at Grand Canyon West, including horseback rides, bus tours,

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sight-seeing tours, air tours, lodging, and food services. Tourism services associated

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with Grand Canyon West is the primary source of income for the Grand Canyon

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Resort Corporation.

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12.

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exclusive use of the mark “Grand Canyon West” to designate the name of and the

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origin of tourism related services, the GRAND CANYON WEST mark has acquired

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distinctiveness.

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13.

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Defendant Grand Canyon West Ranch and also Heli-USA, Inc.

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14.

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former licensee of Plaintiff Grand Canyon Resort Corporation and operated helicopter

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tours at Grand Canyon West up until about 2000. In 2000, the Plaintiff Grand

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Canyon Resort Corporation terminated Heli-USA’s license to land on their property

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including Grand Canyon West after a dispute between Mr. Turner and the Plaintiff

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Grand Canyon Resort Corporation.

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15.

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Canyon West Ranch purchased real property at 3750 E. Diamond Bar Ranch Road, in

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Meadview Arizona, and began operation of a tourist destination.

Since October 1998, the Plaintiff Grand Canyon Resort Corporation has

By 2000, Plaintiff Grand Canyon Resort Corporation’s tourism revenue from

Due to the Plaintiff Grand Canyon Resort Corporation’s long and substantially

Upon information and belief, Mr. Nigel Turner is a manager and/or principal of

Heli-USA operates helicopter tours of the Grand Canyon. Heli-USA is a

Upon information and belief in 2000-2001, Heli-USA and/or Defendant Grand

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16.

Mr. Nigel Turner or Defendant Grand Canyon West Ranch designated the

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property at 3750 E. Diamond Bar Ranch Road, “Grand Canyon West Ranch”, and the

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designation of said property as Grand Canyon West Ranch was done with knowledge

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of the Plaintiff’s prior use of the term Grand Canyon West for its tourist destination.

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17.

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property, Grand Canyon West, are both accessible from Diamond Bar Ranch Road.

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West Ranch”, has a sign above its entrance that reads “GRAND CANYON WEST

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RANCH”, and competes with the Plaintiff Grand Canyon Resort Corporation in the

The Defendant’s property on Diamond Bar Ranch Road and Plaintiff’s

Defendant Grand Canyon West Ranch refers to its property as “Grand Canyon

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same market for tourists and their money.

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19.

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“grandcanyonranch.com” that advertises or promotes Defendant’s services at Grand

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Canyon West Ranch. Upon information and belief, Defendant also advertises or

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promotes services at Grand Canyon West Ranch in print.

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customer’s have been misled or deceived that Defendant is, or is associated, licensed,

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or sponsored by the Plaintiff.

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21.

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registration of their service mark, “GRAND CANYON WEST” in January of 2003.

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22.

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alleging that: (i) the mark was geographically descriptive and not entitled to

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registration; and (ii) the Hualapai committed fraud in the procurement of the

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registration.

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first ground for opposition and determined that the GRAND CANYON WEST mark

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had acquired distinctiveness, but sustained the second ground because “fraud” was

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committed in the procurement of the registration. The Hualapai appealed the Board’s

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decision sustaining the opposition on “fraud” to the Court of Appeals for the Federal

Defendant Grand Canyon West Ranch operates a website

Based on Defendant’s acts, the Plaintiff Grand Canyon Resort Corporation

The Hualapai filed application serial no. 76484111 for federal trademark

Defendant opposed the Hualapai’s registration of “Grand Canyon West”

The Trademark Trial and Appeal Board (Board) dismissed the Defendant’s

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Circuit (Appeal No. 2009-1012). The appeal is pending. Defendant did not appeal the

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Board’s dismissal of the Defendant’s claim that the mark was geographically

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descriptive.

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COUNT 1

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(Declaratory Judgment)

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24.

The Plaintiff Grand Canyon Resort Corporation alleges and incorporates each

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of the foregoing paragraphs as if fully set forth herein.

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25.

The Plaintiff Grand Canyon Resort Corporation requests that this Court issue a

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declaratory ruling that is consistent with the Board’s ruling that the GRAND

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CANYON WEST mark has acquired distinctiveness.

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COUNT 2

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(Trademark Infringement, False Advertising, False Designation of Origin

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Lanham Act § 43(a) (15 U.S.C. § 1125 (a)))

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26.

The Plaintiff Grand Canyon Resort Corporation alleges and incorporates each

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of the foregoing paragraphs as if fully set forth herein.

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27.

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connection with tourism services asserts a false origin of services, or a connection or

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association between Defendant and the Hualapai or Plaintiff Grand Canyon Resort

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Corporation, or the Hualapai’s or Plaintiff Grand Canyon Resort Corporation’s

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approval, sponsorship or approval of the Defendant’s use of the term “Grand Canyon

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West” that is likely to cause confusion, mistake or deception among the Plaintiff’s

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prospective customers.

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28.

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irreparable harm to the Plaintiff Grand Canyon Resort Corporation for which there is

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no adequate remedy at law.

Defendant Grand Canyon West Ranch’s use of “Grand Canyon West” in

Defendant’s acts have caused, and are likely to continue causing, damages and

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COUNT 3

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(Dilution of a Famous Mark - Lanham Act § 43(c) (15 U.S.C. § 1125(c)))

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29.

The Plaintiff Grand Canyon Resort Corporation alleges and incorporates each

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of the foregoing paragraphs as if fully set forth herein.

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30.

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substantially exclusive use of the mark in interstate commerce by Plaintiff Grand

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Canyon Resort Corporation.

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by blurring or tarnishment.

The GRAND CANYON WEST mark has become famous due to the long and

The Defendant’s use of Grand Canyon West Ranch is likely to cause dilution

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32.

The Plaintiff Grand Canyon Resort Corporation has been and is likely to

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continue to be damaged by Defendant’s acts.

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COUNT 4

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(Common law unfair competition)

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33.

The Plaintiff Grand Canyon Resort Corporation alleges and incorporates each

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of the foregoing paragraphs as if fully set forth herein.

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34.

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Canyon Resort Corporation’s customers as to the source or geographic origin of the

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Defendant’s services or as to an affiliation, sponsorship or approval by the Plaintiff

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Grand Canyon Resort Corporation or the Hualapai.

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35.

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Plaintiff Grand Canyon Resort Corporation.

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36.

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continue to be damaged by Defendant’s acts.

Defendant’s acts are likely to confuse, deceive or mislead the Plaintiff Grand

Defendant’s acts as alleged are to the likely commercial detriment of the

The Plaintiff Grand Canyon Resort Corporation has been and is likely to

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PRAYER FOR RELIEF

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WHEREFORE, The Plaintiff Grand Canyon Resort Corporation prays for judgment

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A.

damages in an amount to be determined at trial, including all of

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Defendants’ profits obtained in the form of sales of tourism services at Grand Canyon

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West Ranch, plus costs, attorneys’ fees, and applicable interest;

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B.

that an order be entered preliminarily and permanently enjoining and

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restraining the Defendants and any related parties, from (1) directly or indirectly using

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the mark Grand Canyon West including Grand Canyon West Ranch, or any other

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mark, word or name similar to the mark Grand Canyon West, including Grand

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Canyon West Ranch, which is likely to cause confusion, and (2) continuing any and

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all acts of unfair competition as alleged herein;

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C.

that an order be entered requiring the Defendants to account to the

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Plaintiff Grand Canyon Resort Corporation for any and all profits derived from the

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sales of tourism services at Grand Canyon West Ranch and/or directly or indirectly

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used the mark Grand Canyon West Ranch or any other similar mark;

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D.

that the Court order that any monetary award to the Plaintiff Grand

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Canyon Resort Corporation be treble the amount of profits or income earned as

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allowed under § 43(a) of the Lanham Act for Defendants intentionally infringing the

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Grand Canyon West service mark;

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E.

a full accounting and examination of all books pertaining to any

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marketing, advertising or sales of tourism services at Grand Canyon West Ranch

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and/or that directly or indirectly used the mark Grand Canyon West Ranch or any

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other similar mark, from Defendants’ first use of the mark until the present; and

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F.

any other relief that this Court finds just and proper.

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//

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//

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Dated this 12th day of February, 2009.

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Venable, Campillo, Logan & Meaney, P.C.

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By /s/Michael F. Campillo Michael F. Campillo SBN 019014

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1938 East Osborn Road Phoenix, Arizona 85016 Tel: 602-631-9100 Fax: 602-631-4529 E-Mail [email protected] Attorneys for Plaintiff Grand Canyon Resort Corporation

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