              Case: 17-13351    Date Filed: 03/18/2019   Page: 1 of 6


                                                              [DO NOT PUBLISH]



               IN THE UNITED STATES COURT OF APPEALS

                        FOR THE ELEVENTH CIRCUIT
                          ________________________

                                No. 17-13351
                            Non-Argument Calendar
                          ________________________

                      D.C. Docket No. 1:16-cv-20683-FAM



HERON DEVELOPMENT CORPORATION,
a foreign corporation,

                                                               Plaintiff - Appellee,

versus

VACATION TOURS INC.,
a Florida Corporation d.b.a. Vacation Store of Miami, Inc.,
MEDIA INSIGHT GROUP, INC.,
a Florida corporation d.b.a. Media Insight,
GEORGE A. ALVAREZ,
jointly, severally, and individually,
ROSANNA M. MENDEZ,

                                                          Defendants - Appellants.

                          ________________________

                   Appeal from the United States District Court
                       for the Southern District of Florida
                         ________________________

                                (March 18, 2019)
              Case: 17-13351     Date Filed: 03/18/2019   Page: 2 of 6


Before MARTIN, JILL PRYOR, and JULIE CARNES, Circuit Judges.

PER CURIAM:

      Defendants Vacation Tours, Inc., Media Insight Group, Inc., Rosanna

Mendez, and George Alvarez (collectively, “Defendants”) appeal a preliminary

injunction order that prohibited them from registering certain domain names.

Because the district court recently entered final judgment, we dismiss this appeal

as moot.

I.    Background
      Plaintiff Heron Development Corporation (“Heron”) is a wholesale

commercial retailer of unsold resort inventory in Mexico and the Caribbean,

including properties owned by Palace Resorts, S.A. de C.V. (“Palace Resorts”).

Plaintiff brought a seven-count action alleging that Defendants violated the

trademark infringement and anti-dilution protections of the Lanham Act, the

Anticybersquatting Consumer Protection Act, and Florida state trademark and

consumer protection law.

      Plaintiff moved for a preliminary injunction. The district court granted

Plaintiff’s motion as to Count I (Anticybersquatting Consumer Protection Act,

15 U.S.C. § 1125(d)). The district court ordered that “during the pendency of this

action, Defendants are: (1) prohibited from registering domain names that

incorporate, in whole or in part, the Palace Resort registered trademarks that have


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become incontestable; and ( 2) required to change the Domain Name Service

settings on all the Infringing Domain Names to forward website traffic to the

appropriate Palace Resort webpage.” Defendants filed a motion for

reconsideration, arguing that Heron lacked standing under 15 U.S.C. § 1125(d) to

assert the Palace Resort registered trademarks because it was not the owner of the

trademarks, only an exclusive licensee. The district court denied the motion.

Defendants appealed.

      On October 27, 2017, Heron filed a joint second amended complaint

realleging and making Palace Resorts, the owner of the relevant trademarks, a

plaintiff with respect to the cybersquatting claim under 15 U.S.C. § 1125(d) (Count

I). On November 30, 2017, the district court dismissed Count I as to Heron for

lack of standing. Defendants subsequently argued that the district court should

dissolve the injunction because Heron no longer had a claim under Count I.

      In view of the district court’s dismissal of Heron as a party to the sole count

underlying the preliminary injunction, on January 26, 2018, we requested

supplemental briefing on:

      [W]hether the preliminary injunction that is the subject of this appeal
      survives the dismissal of the claim underlying that injunction, such that
      the injunction ruling should be addressed on the merits by this Court
      rather than remanded to the district court with instructions to dissolve
      the injunction as moot. Cf. Fed. R. Civ. P. 62.1 (providing that, if a
      party files a motion for relief that the district court lacks authority to
      grant because of a pending appeal, the district court may issue an
      indicative ruling stating either that it would grant the motion if the court
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      of appeals remands for that purpose or that the motion raises a
      substantial issue); Birmingham Fire Fighters Ass’n 117 v. City Of
      Birmingham, 603 F.3d 1248, 1254–55 (11th Cir. 2010) (dismissing for
      lack of jurisdiction an appeal from the issuance of a preliminary
      injunction because, during the pendency of the appeal, the district court
      entered a final judgment into which the preliminary injunction merged).

      In their supplemental brief, Defendants argued that the preliminary

injunction cannot survive the dismissal of Heron’s Count I and, therefore, asked

that this Court remand the case and direct the district court to dissolve the

injunction. Heron, on the other hand, argued that the injunction survived because

Palace Resorts was “effectively substituted” for Heron as to Count I.

      On the same day Heron filed its supplemental brief in our Court, it and

Palace Resorts filed a motion in the district court asking that court to modify the

preliminary injunction to reflect that Palace Resorts, rather than Heron, was the

beneficiary of that injunction. The district court denied that motion and compelled

Defendants’ compliance with the preliminary injunction.

      On June 12, 2018, the district court granted summary judgment for Palace

Resorts on Count I, concluding that Defendants’ registration and use of certain

domain names violated the Anticybersquatting Consumer Protection Act,

15 U.S.C. § 1125(d). Heron and Palace Resorts jointly moved to dismiss all other

claims. The district court granted the motion and proceeded to a bench trial on

statutory damages, attorneys’ fees, and equitable relief as provided under the

Lanham Act.

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      The district court issued a Trial Order on February 15, 2019, concluding that

Palace Resorts is “entitled to injunctive relief, statutory damages, and reasonable

attorneys’ fees and costs.” The district court ordered Defendants to “transfer all

forty (40) of the Infringing Domain Names to Plaintiff Palace Resorts.” However,

the district court denied Palace Resort’s request to permanently enjoin Defendants

from any further infringement of Palace Resort’s trademarks, stating: “While the

facts of the case would likely support entry of a permanent injunction, Plaintiff has

failed to analyze, or otherwise mention, any of the requisite factors and the Court

will not engage in the analysis on its behalf.” The district court awarded $400,000

in statutory damages and directed that Palace Resorts file a separate motion for

attorneys’ fees and costs. The court entered final judgment on February 20, 2019.

II.   Discussion

      “[I]t is incumbent upon this court to consider issues of mootness sua sponte

and, absent an applicable exception to the mootness doctrine, to dismiss any appeal

that no longer presents a viable case or controversy.” Hunt v. Aimco Props., L.P.,

814 F.3d 1213, 1220 (11th Cir. 2016) (quoting Pac. Ins. Co. v. Gen. Dev. Corp., 28

F.3d 1093, 1096 (11th Cir. 1994)). “A case is moot when it no longer presents a

live controversy with respect to which the court can give meaningful relief.” Id.

(quoting Ethredge v. Hail, 996 F.2d 1173, 1175 (11th Cir. 1993)).




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       This appeal is moot. “Once a final judgment is rendered, the appeal is

properly taken from the final judgment, not the preliminary injunction.” Burton v.

State of Ga., 953 F.2d 1266, 1272 n.9 (11th Cir. 1992); Associated Builders &

Contractors Fla. East Coast Chapter v. Miami-Dade Cty., 594 F.3d 1321, 1323–24

(11th Cir. 2010) (“Once an order of permanent injunction is entered, any

preliminary injunction merges with it, and appeal may be had only from the order

of permanent injunction.”). Here, the district court entered final judgment,

awarding statutory damages, requiring transfer of 40 infringing domain names, and

denying further injunctive relief. Defendants’ appeal is properly taken from the

final judgment, not the preliminary injunction. Burton, 953 F.2d at 1272 n.9.

III.   Conclusion
       For the above reasons, we dismiss this appeal for lack of jurisdiction.




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