Oro Centro Complaint

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO

ORO CENTRO, INC.; HUMBERTO RUIZ

GARAY, CÁNDIDA SAMBOLÍN BONILLA, AND

THE CONJUGAL PARTNERSHIP BETWEEN THEM,

Plaintiffs,

v.

JCC ORO CENTRO, JOSUÉ CARRIÓN CARRERO, MARY DOE, AND THE CONJUGAL

PARTNERSHIP BETWEEN THEM; COMPANIES A, B AND C; INSURANCE COMPANIES X, Y AND Z, AND JOHN DOE,

Defendants.

CIVIL NO. 10-2154

RE:

UNFAIR COMPETITION; FALSE DESIGNATION OF ORIGIN; AND DAMAGES DEMAND FOR JURY TRIAL

VERIFIED COMPLAINT

TO THE HONORABLE COURT:

COME NOW Plaintiffs Oro Centro, Inc., Humberto Ruiz Garay,

Cándida Sambolín Bonilla, and the conjugal partnership between

them (“Plaintiffs”), by and through the undersigned counsels,

and respectfully state, and pray as follows:

I.

NATURE OF ACTION

1.This is an action to recover for Defendants’ willful acts

of unfair competition and false designation of origin under 15

U.S.C. §1125(a) (Section 43(a) of the Lanham Act), violations of

the Puerto Rico law unfair competition doctrines under Article

Case 3:10-cv-02154-FAB -CVR Document 1 Filed 11/30/10 of 30

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1802 of the Civil Code of Puerto Rico, 31 L.P.R.A. § 5141, and

common law trademark infringement and unfair competition.

II.

PARTIES

2. Oro Centro, Inc. is a Puerto Rico corporation created

and existing since 1980. Oro Centro, Inc. owns and operates a

pawnshop and jewelry store under the “ORO CENTRO” mark located

at 15 Muñoz Rivera Street in the Municipality of Mayagüez,

Puerto Rico, and another pawnshop and jewelry store also

operating under the “ORO CENTRO” mark located on Kilometer

159.6, Street No. 2 in the Castillo Neigborhood in Mayagüez,

Puerto Rico. [Exhibit 1]

3. Humberto Ruiz Garay (“Ruiz”) and his wife Cándida

Sambolín Bonilla (“Sambolín”) are natural persons who live in

Mayagüez, Puerto Rico. It was Ruiz and Sambolín who in 1979

opened the pawnshop that began operating under the “ORO CENTRO”

tradename and is located at 15 Muñoz Rivera Street in the

Municipality of Mayagüez, Puerto Rico. Ruiz is the President of

Oro Centro, Inc., which was created in 1980 in relation to the

operation of the Mayagüez pawnshops and jewelry stores that

operate under the “ORO CENTRO” mark. Sambolín is the Vice-

President of said corporation. [See Exhibit 1]


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4. Oro Centro, Inc., Ruiz and Sambolín are the “senior

users” of the “ORO CENTRO” mark which they have used for over

thirty (30) years to identify their pawnshops and jewelry

stores.

5. Upon information and belief, Josué Carrión Carrero

(“Carrión”), his wife Mary Doe, and the conjugal partnership

between them (“Defendants”) are the owners of pawnshops and

jewelry stores that operate in J-13 Betances Avenue in the

Hermanas Dávila Neighborhood located in the Municipality of

Bayamón, Puerto Rico, and in the Monserrate Avenue in Carolina,

Puerto Rico. Since 1996, Defendants have been operating said

pawnshops and jewelry stores under the name “Oro Centro Joyería

y Casa de Empeño”. Mary Doe is the unknown name of Carrión’s

wife who is, along with the conjugal partnership constituted

among them, owner of the Bayamón and Carolina pawnshops and

jewelry stores. Plaintiffs will substitute Mary Doe’s fictitious

name with the correct name of Carrión’s wife as soon as they

have knowledge of said name.

6. Companies A, B and C are corporations that may be

responsible to Plaintiffs for the facts alleged in the present

Verified Complaint, but at this moment their names and addresses

are unknown.

7. Codefendants Insurance Companies X, Y and Z are

insurance companies that may be responsible to Plaintiffs for


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the facts alleged in the present Verified Complaint, but at this

moment their names and addresses are unknown.

8. Codefendants John Doe and Jane Doe are unknown

individuals who are or may be responsible to Plaintiffs. Their

personal information is unknown at this moment.

III.

JURISDICTION AND VENUE

9. This Honorable Court has jurisdiction because:

(a) this is a civil action arising under the Lanham Act of the

United States, 15 U.S.C. §§ 1051 et seq., subject matter

jurisdiction being conferred under 15 U.S.C. § 1121, and

28 U.S.C. §§ 1331 and 1338. The state and common law claims are

joined pursuant to 28 U.S.C. §§ 1367 and 1338, in as much as

those claims are related to the claims in the action within this

Honorable Court’s original jurisdiction and form a part of the

same case or controversy.

10. Venue is proper in this District pursuant to 28 U.S.C.

§ 1391(b).

IV.

FACTS GIVING RISE TO THIS ACTION

A. Origin of Plaintiffs’ Business

11. In 1979, Ruiz and Sambolín opened a family-owned and

now highly known and regarded pawnshop located at 15 Muñoz

Rivera Street in the Municipality of Mayagüez. In 1980, Ruiz


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and Sambolín created Oro Centro, Inc. in relation with the

operation of said pawnshop.

12. On September 15, 1980, Plaintiffs adopted the “ORO

CENTRO” mark to identify their establishment. See Exhibit 2-2E.

From its beginning, the first “ORO CENTRO” marked pawnshop

received a favorable reception among its customers comprising

mainly of residents, visitors and tourists from the

municipalities of the western half of Puerto Rico’s main island.

This includes all municipalities to the west of Arecibo, Utuado,

Jayuya and Ponce, including the aforementioned municipalities

(hereinafter collectively referred to as “The Western Half of

Puerto Rico’s Main Island”), which comprise plaintiffs’ relevant

market. The consequent, rapidly-growing clientele prompted

Plaintiffs to expand the services and goods provided in the

establishment. Approximately two (2) years after, said

establishment began operating also as a jewelry store. Since

2009, Plaintiffs have operated a second pawnshop and jewelry

store located in Kilometer 159.6, Street No. 2 in the Castillo

Neighborhood of Mayagüez, Puerto Rico.

13. Plaintiffs’ also have marketed their business and

mark in New York City. This as a result of their interest in

selling their products and services in New York and also

promoting their businesses among the large Puerto Rican


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population in that city, which frequently visits the relevant

market region which Plaintiffs serve. Exhibit 3.

14. For decades, all of Plaintiffs’ establishments have

relied on the good reputation and goodwill developed by the “ORO

CENTRO” mark as a means to attract a steady flow of costumers

comprising mainly of residents, visitors and tourists of the

Western Half of Puerto Rico’s Main Island.

15. Since 1980, Plaintiffs have continuously used in

commerce the “ORO CENTRO” mark. All of their establishments

operate using the “ORO CENTRO” mark to identify them. See

Exhibits 2-4.

16. During more than thirty (30) years of operation, the

“ORO CENTRO” mark has proven to be a valuable tool to establish

the relationship between Plaintiffs’ business and to identify

them as originating from the enterprise begun by Ruiz and

Sambolín in 1979.

17. Clients from the Western Half of Puerto Rico’s Main

Island choose Plaintiffs’ establishments because of their good

reputation concerning the services provided therein, the quality

of their products, and the trust developed during the more than

thirty (30) years that the pawnshops and jewelry store have been

doing business in the Western Half of Puerto Rico’s Main Island.

The “ORO CENTRO” mark serves Plaintiffs as a way to woo clients

that have acquired knowledge of the excellent reputation and


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goodwill developed among residents, visitors and tourists of the

Western Half of Puerto Rico’s Main Island. It is a famous mark.

18. Since 1979, Plaintiffs’ relevant investments to

promote their Mayagüez businesses have included those necessary

to condition their places of operations for the proper

development of the enterprise and to provide adequate service to

their clients. In addition, the Plaintiffs have also devoted

large amounts of financial resources in advertising for their

business in press, radio stations, and television channels, as

well as in organizing and producing promotional events to

disseminate information about their products and services.

These efforts and the reputation earned in light of the quality

of the services and products provided have enabled the

Plaintiffs’ “ORO CENTRO” marked establishments to become

profitable enterprises. Exhibits 4,5 6 and 7.

19. Consequently, the “ORO CENTRO” mark has become

emblematic of these qualities to the residents, visitors and

tourists of the Western Half of Puerto Rico’s Main Island. As

such, the “ORO CENTRO” mark is an asset of inestimable value to

Plaintiffs. The “ORO CENTRO” mark is probably their most valued

asset, representing and embodying Plaintiffs’ businesses

goodwill and excellent reputation, and the good name and

trustworthiness that Ruiz and Sambolín have developed as

business people. It is because of this excellent reputation and


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the goodwill developed during decades of operation that

Plaintiffs’ businesses have come to also frequently serve

tourists from outside Puerto Rico that visit the Mayagüez and

other municipalities of Puerto Rico’s western and southern

regions.

20. From 1979 until at least 1996, Plaintiffs’ Mayagüez

establishments were the only pawnshops and/or jewelry stores

that operated under the “ORO CENTRO” mark in Puerto Rico. And

since 1979, said establishments have been the only ones of their

kind that have operated in the Western Half of Puerto Rico’s

Main Island under the “ORO CENTRO” mark. During said period,

Plaintiffs have spent –and continue to spend— thousands of

dollars in advertising and promotional activities as well as

their hard work to build and sustain the excellent reputation

and goodwill for their “ORO CENTRO” marked business.

21. Throughout the years, Plaintiffs’ business has

consistently and repeatedly served clients from Aguada,

Aguadilla, Añasco, Arecibo, Cabo Rojo, Coamo, Guanica,

Guayanilla, Hormigueros, Lajas, Las Marias, Maricao, Mayaguez,

Moca, Peñuelas, Ponce, Rincon, Sabana Grande, San German, and

essentially all towns that comprise the Western Half of Puerto

Rico’s Main Island. Exhibit 8.


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B. Defendants’ Wrongful Acts

22. In 1998, Ruiz received information concerning a

recently-opened pawnshop and jewelry store that was operating

under the name “Oro Centro Joyería y Casa de Empeño”, located in

the Municipality of Bayamón.

23. Upon receiving said information, Ruiz visited

defendants’ establishment with the intention of initiating a

dialog aimed at finding an amicable way to protect Plaintiffs’

money investment and efforts directed at developing the

reputation for their “ORO CENTRO” marked businesses.

24. Nonetheless, when he informed Defendants of his

proprietary rights over the Oro Centro trade mark these

responded that that was a matter to be handled by attorneys and

was ignored.

25. As a result of this exchange, it became evident to

Ruiz that he would have to seek judicial protection in order to

deal with defendants. In the process of evaluating his options

Ruiz came to the conclusion that Defendants operated in a

different market that he did and that he needed to act only if

they intended to expand their operations to the Western Half of

Puerto Rico’s Main Island.

26. During the more than a decade that elapsed since

Ruiz’s visit to Defendants’ facilities it became evident that


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these would limit their operations to the San Juan Metropolitan

Area and adjacent municipalities. Exhibit 9.

27. This meant that Defendants and Plaintiffs businesses

would operate in clearly different and separate market areas,

and thus would not compete for clients. Initiating legal

proceedings at the time was not necessary to protect Plaintiffs’

businesses and/or to prevent their clientele from confusion

between Plaintiffs’ and Defendants’ businesses.

28. Consistent with this reality, since 1998, the

businesses have continued their operations in distant and

independent markets without any problems. Since then,

Plaintiffs have been on the lookout for any potential

competitors who may attempt to set up shop in the Western Half

of Puerto Rico’s Main Island and who may, without authorization,

use or intend to use the “ORO CENTRO” mark.

29. However, until recently, Plaintiffs had never

encountered any problems of that kind. Relevant to the issue at

hand, during said period, Defendants had not opened a business

beyond the San Juan Metropolitan Area and\or its adjacent

municipalities using the “ORO CENTRO” mark.

30. Nonetheless, recently, Defendants have begun an

advertising campaign in the written press as well as in A.M. and

F.M. radio stations promoting the opening of a new pawnshop and

jewelry store identified with the “ORO CENTRO” mark, located in


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front of the Plaza del Caribe Mall in Ponce. Upon information

or belief, Plaintiffs have learned that the Ponce establishment

may be identified as “JCC Oro Centro”.

31. Upon obtaining knowledge of Defendants’ plans to open

the Ponce establishment, and given that said establishment would

be located in a heavily-populated and very frequented

municipality that serves as a steady supply of costumers for

Plaitiffs’ business, Plaintiffs realized that this meant that,

for the first time, their business would end up competing for

clients with an establishment unlawfully using the “ORO CENTRO”

mark in the Western Half of Puerto Rico’s Main Island.

32. Since the beginning of Defendants’ advertising

campaign to promote their Ponce establishment, several clients

have commented on what they mistakenly believe will be

Plaintiffs’ new Ponce shop.

33. Moreover, since then, Plaintiffs’ have received

numerous telephone calls from clients looking to purchase

electronics. When Plaintiffs have explained to those customers

that they do not sell electronics, Plaintiffs have been accused

by the callers of engaging in false advertising because they had

heard in the advertising relating to “Plaintiffs upcoming

opening of a Ponce shop” that “ORO CENTRO” sells that type of

goods and/or equipment.


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34. Plaintiffs have also received several phone calls

inquiring about employment opportunities in “their” Ponce

establishment.

35. Recently, Plaintiffs sent a letter to Carrión

informing him that they had learned of Defendants’ intentions to

open a pawnshop and jewelry store in Ponce and that they

intended to unlawfully use the “ORO CENTRO” or “JCC ORO CENTRO”

marks to identify the same. The letter was hand-delivered and

sent via fax to Carrión who received the same on October 1,

2010. Exhibit 10.

36. In the aforementioned communication, Plaintiffs

reminded Carrión that they are the senior users of the “ORO

CENTRO” mark. Plaintiffs brought to Carrión’s attention the

fact that they had not taken any legal action regarding

Defendants’ use of the “ORO CENTRO” mark solely because,

Defendants were not operating beyond the San Juan Metropolitan

Area and adjacent municipalities, and so far the businesses had

been able to coexists peacefully since the late-1990s.

37. However, as Plaintiffs explained to Carrión in the

letter, insistence on the decision to invade Plaintiffs’

relevant trade area would force the commencement of legal action

to vindicate their rights as senior users of the “ORO CENTRO”

mark. Said action would be necessary to protect themselves as

well as the public from Defendants’ attempt to cause confusion


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among the public of the relevant market area and, consequently,

unlawfully benefit from the excellent reputation and goodwill

that the “ORO CENTRO” mark had developed in the region as a

consequence of Plaintiffs’ decades-long business efforts.

38. In light of the above, Plaintiffs specifically

demanded that Defendants cease and desist from their plans to

use the “ORO CENTRO” and/or “JCC ORO CENTRO” marks outside the

San Juan Metropolitan Area or adjacent municipalities.

Plaintiffs further requested Defendants to cease and desist from

their intention to unlawfully use “ORO CENTRO” and/or “JCC ORO

CENTRO” in connection with the pawnshop and jewelry store they

intended to open in Ponce.

39. In their letter, Plaintiffs asked Carrión to contact

their attorney’s office on or before October 5, 2010 at 5:00

p.m. to, confirm that it would refrain from using the “ORO

CENTRO” and/or “JCC ORO CENTRO” marks outside the San Juan

Metropolitan Area or its adjacent municipalities. Nonetheless,

Defendants have disregarded Plaintiffs’ request and to this day

have yet to contact their legal representative regarding the

request made in order to avoid a court showdown.

40. Moreover, Defendants have continued their radio

advertising campaign announcing that they will “soon” open a

pawnshop and jewelry store that will be identified as “Oro

Centro Móvil”. [See Exhibit 11]


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41. Since the beginning of Defendants’ advertising

campaign announcing the opening of their Ponce establishment

using the “ORO CENTRO” mark, Plaintiffs’ businesses have

received several telephone calls in which it has become obvious

that Defendants’ advertising campaign has been successful in

leading several of their clients to believe that the Ponce and

Mayagüez establishments have the same origin or are related.

Likewise, several customers that have attended Plaintiffs

establishments have also expressed their incorrect belief that

the Ponce establishment whose opening has been announced in the

radio ads are related to the Mayagüez businesses.

42. There is no doubt that Defendants acted with the

clear intent and desire to appropriate of the goodwill and

reputation of the “Oro Centro” brand. A research of the

Registry of Corporations of the Department of State of the

Commonwealth of Puerto Rico would have been enough to bump into

Plaintiffs business. Furthermore, Defendants needed to go no

further than the Yellow Pages in order to realize that another

pawn shop was operating under the “Oro Centro” trade name.


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IV.

FIRST CLAIM FOR RELIEF

FALSE DESIGNATION OF ORIGIN AND

FEDERAL UNFAIR COMPETITION UNDER THE LANHAM ACT

(Against Defendants jointly and severally)

43. Paragraphs 1 to 43 are hereby incorporated by

reference and Plaintiffs further state:

44. Plaintiffs assert that, by conducting a radio

advertising campaign announcing the opening of a Ponce pawnshop

and jewelry store using the “ORO CENTRO” and/or “JCC ORO CENTRO”

marks, Defendants are violating Plaintiffs’ legal rights and are

irreparably injuring and adversely affecting, and will continue

to affect Plaintiffs’ business and the investment Plaintiffs

have made in the “ORO CENTRO” mark and related goodwill

45. Upon information and belief, Defendants’ aforesaid

acts were undertaken willfully and with the intention of causing

confusion, mistake or deception and have, in fact, caused

confusion, mistake and deception as to the source, sponsorship,

or approval by Plaintiffs of Defendants’ business and services.

46. Defendants’ acts create the false and misleading

impression that the goods and services that will be made

available in the Ponce establishment are the same goods and

services of Plaintiffs’ businesses, or associated or connected

with Plaintiffs’ businesses, or have the sponsorship,

endorsement or approval of their “ORO CENTRO” marked businesses.


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47. Defendants’ acts have caused, and unless enjoined by

this Honorable Court will continue to cause, a likelihood of

confusion and deception of members of the trade and public, and

additionally, injury to the “ORO CENTRO” mark’s goodwill and

reputation, for which Plaintiffs have no adequate remedy at law.

48. The relevant facts herein set forth are enough to:

(a) conclude that Defendants intend to enter into the market

area in which Plaintiffs conduct their business and unlawfully

use the mark belonging to Plaintiffs; (b) establish the

relationship between the parties’ channels of trade and

advertising methods; (c) conclude that the prospective customers

of the Ponce and Mayagüez establishments are the same;

(d) conclude that there is actual confusion stemming from the

advertising campaign begun by Defendants with relation to their

intention to do business in Ponce; (e) conclude that we are

dealing with a well known mark; (f) and conclude that Defendants

are intentionally appropriating Plaintiffs’ mark.

49. Plaintiffs have no adequate remedy at law in that the

damages as set forth above, including danger to the general

public in reliance on the reputation of the “ORO CENTRO” mark in

the Western Half of Puerto Rico’s Main Island, the

misappropriation and theft of Plaintiffs’ proprietary mark and

their business system, and the consequent injury to consumer

recognition and goodwill, cannot be compensated in monetary


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damages. Under the Lanham Act, irreparable harm to Plaintiffs

is presumed to result from Defendants’ unauthorized use of “ORO

CENTRO’s” mark and unfair competition.

50. Defendants’ use of the “ORO CENTRO” mark in

connection with the Ponce establishment is likely to cause

confusion, or to cause mistake, or to deceive customers and

potential customers as to the affiliation, connection or

association of Defendants with Plaintiffs or as to the source or

origin of the services rendered and goods provided by Defendants

by reason of the fact that customers are likely to believe that

Defendants’ services originate from, or are in some way properly

connected with, approved by, sponsored by, or endorsed by

Plaintiffs.

51. Defendants’ aforementioned acts misrepresent the

origin, nature, characteristics or qualities of its or

Plaintiffs’ services or commercial activities. Defendants’

aforementioned activities constitute a false designation of

origin and false or misleading descriptions or representations

of fact in violation of Section 43(a) of the Lanham Act, 15

U.S.C. § 1125(a)(1)(A).



confusion, mistake or deception.


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53. By reason of Defendants’ acts, Plaintiffs are

suffering and will continue to suffer irreparable damage and,

unless Defendants are restrained from continuing their wrongful

acts, the damage to Plaintiffs will increase.


damages as set forth above, including danger to the public’s

reliance on the reputation of Plaintiffs’ businesses and mark,

the misappropriation and theft of Plaintiffs’ proprietary mark

and their business system, and the consequent injury to consumer



is presumed to result from Defendants’ unauthorized use of the

“ORO CENTRO” mark and trade dress in relation to the Ponce

establishment.

55. Defendants have caused and will likely continue to

cause substantial injury to the public and Plaintiffs, and

Plaintiffs’ are entitled to a preliminary and permanent

injunction, a temporary restraining order and to recover

Defendants’ profits, actual damages, costs, and reasonable

attorneys’ fees as provided by the applicable provisions of the

Lanham Act, in an amount not less than $100,000.00.

56. Plaintiffs have no adequate remedy at law.


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VII.

SECOND CLAIM FOR RELIEF

WILLFUL TRADEMARK VIOLATION 15 U.S.C. § 1117

(Against all Defendants jointly and severaly)



58. Codefendants Carrión, Mary Doe, and the conjugal

partnership between them are jointly and severally liable along

with all other Defendants to Plaintiffs for their willful

violation of applicable trademark laws.

59. Upon information and belief, codefendants Carrión,

Mary Doe, have willfully mimicked Plaintiffs’ business trade

dress.

60. Section 1117 of the Trademark Act establishes that

proof that a trademark violation was unlawful, deliberate, or

calculated is relevant to proving infringement by likelihood of

confusion and to the recovery of remedies, such as profits of

the infringer and attorneys fees, as well as establishing

counterfeiting. While willful infringement is not necessary to

prove trademark infringement, proof of willful or calculated

behavior may raise the presumption of a likelihood of confusion.

See, e.g., Paddington Corp. v. Attiki Importers, 996 F.2d 577,

586 (2nd Cir. 1993).


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61. Defendants have acted willfully and have caused

irreparable injury to Plaintiffs.

62. Defendants’ foregoing acts constitute a violation of

Section 1117 of the Trademark Act, therefore Plaintiffs are

entitled to an accounting of profits and attorneys fees pursuant

to 15 U.S.C. § 1117.

63. By reason of the acts of Defendants alleged herein,

Plaintiffs are suffering and will continue to suffer irreparable

harm and, unless Defendants are restrained from continuing their

wrongful acts, the damages to Plaintiffs will increase.


damages as set forth above, including danger to the public in

reliance on the reputation of the “ORO CENTRO” marks, the

misappropriation and theft of Plaintiffs’ proprietary marks and

their business system, and the consequent injury to consumer



is presumed to result from Defendants’ unauthorized use of the

“ORO CENTRO” mark and trade dress.







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attorneys’ fees under 15 U.S.C. §§ 1114(1), 1116(a), 1117(a), in

an amount not less than $100,000.00.


VIII.

THIRD CLAIM FOR RELIEF

UNFAIR COMPETITION UNDER PUERTO RICO LAW

(Against Defendants jointly and severally)



68. Plaintiffs are the senior users in commerce of their

“ORO CENTRO” trademark.

69. Defendants’ use of the “ORO CENTRO” and/or “JCC ORO

CENTRO” marks in relation with the Ponce establishment violates

state trademark rights insofar as it constitutes trademark

infringement, creates confusion as to the source,

misappropriation of Plaintiff's goodwill, and unfair competition

under Puerto Rico law.



confusion, mistake or deception.

71. Defendants’ acts complained of above constitute

unfair methods of competition in the conduct of trade or

commerce in that: (a) such acts enable and will continue to

enable Defendants to obtain the benefit of, and trade on, the

goodwill of the Plaintiffs’ mark; (b) such acts damage and will


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continue to damage the goodwill of Plaintiffs’ businesses in

that Plaintiffs do not have control over Defendants’ business,

over the quality of their products and/or over the quality of

its services; (c) such acts have caused and are likely to

continue to cause confusion, mistake or deception of the public;

and (d) such acts will result in the unjust enrichment of

codefendants.

72. Defendants’ negligent or intentional acts have caused

Plaintiffs to suffer injury and damages, including loss of

income, loss of reputation and goodwill, the costs of this

litigation and more.

73. Such acts of Defendants’ are greatly and irreparably

damaging to Plaintiffs and will continue to be greatly and

irreparably damaging to Plaintiffs unless enjoined by this

Honorable Court, and Plaintiffs are without an adequate remedy

at law.

74. Defendants’ use of Plaintiffs marks in relation to

the Western Half of Puerto Rico’s Main Island is meant to take

advantage of Plaintiffs’ businesses’ goodwill and reputation,

and is an unfair method of competition. See Posadas de Puerto

Rico v. Sands Hotel & Casino, 131 D.P.R. 21, 36 (1992).

75. Defendants’ intentional or negligent violation of

Section 3 of Act No. 77 constitutes fault or negligence as those

terms are defined in Article 1802 of the Civil Code of Puerto


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Rico, 31 L.P.R.A. § 5141, and those acts have caused Plaintiffs

to suffer the injury and damages identified above.

76. Therefore, pursuant to said Article 1802 of the Civil

Code, codefendants are obligated to indemnify and repair all the

damages caused to Plaintiffs.

77. By reason of Defendants’ acts, Plaintiffs are

suffering and will continue to suffer irreparable damage and,

unless Defendants are restrained from continuing their wrongful

acts, the damage to Plaintiffs will increase.






attorneys’ fees under 15 U.S.C. §§ 1114(1), 1116(a), 1117(a), in

an amount not less than $100,000.00.


IX.

FOURTH CLAIM FOR RELIEF

TEMPORARY RESTRAINING ORDER

PRELIMINARY AND PERMANENT INJUNCTION



81. Considering the above detailed facts as Verified

herein by Ruiz, Plaintiffs are entitled to a temporary


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restraining order, a preliminary and a permanent injunction

order instructing Defendants to enjoin from: from utilizing the

trademark “ORO CENTRO” or the confusingly similar trademark “JCC

ORO CENTRO” or any derivative or shorthand notation thereof, or

the term “ORO”, “CENTRO”, or any other term associated intended

to confuse the public by suggesting association with the

Plaintiffs’ businesses, in connection with any pawnshop and/or

jewelry store in the Western Half of Puerto Rico’s Main Island,

as the term has been previously defined, which would give rise

to a likelihood of confusion as to the source of such goods and

services as those being offered by Plaintiffs; and from using

the “ORO CENTRO” mark with relation to any such business; and

from willfully and unlawfully trading upon Plaintiffs’

businesses’ goodwill and reputation through its unauthorized use

of the “ORO CENTRO” mark and décor in the Western Half of Puerto

Rico’s Main Island. More particularly, enjoining Defendants

from using Plaintiffs’ distinctive trade name and from willfully

and unlawfully trading upon “ORO CENTRO’s” goodwill and

reputation through its unauthorized use of the mark with

relation to an establishment in the Western Half of Puerto

Rico’s Main Island; and from committing any other unfair

business practices directed towards obtaining for themselves

Plaintiffs the business and customers.


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82. Defendants’ aforesaid acts have caused Plaintiffs to

suffer injury and damages of such a nature that they could not

be adequately compensated by an award of monetary damages alone.

83. Said illegal acts are greatly and irreparably

damaging to Plaintiffs and will continue to cause great and

irreparable damages, and harm unless enjoined by this Honorable

Court, pursuant to Rule 65 of the Federal Rules of Civil

Procedure.

84. Because an award of monetary damages cannot fully and

adequately compensate Plaintiffs for their losses, Plaintiffs is

without an adequate remedy at law.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs pray that this Honorable Court

declares and enters a judgment providing that:

1. Defendants’ use of the marks “ORO CENTRO” and/or “JCC

ORO CENTRO” in connection with any pawnshop and/or jewelry store

in the Western Half of Puerto Rico’s Main Island as the term has

been herein defined (The municipalities of Arecibo, Utuado,

Jayuya and Ponce and all towns to the west of these) constitutes

unfair competition.

2. Defendants’ use of the marks “ORO CENTRO” and/or “JCC

ORO CENTRO” in the Western Half of Puerto Rico’s Main Island as

the term has been herein defined (The municipalities of Arecibo,

Utuado, Jayuya and Ponce and all towns to the west of these) is


26

confusingly similar and conflicts with Plaintiffs’ use of its

service mark “ORO CENTRO” and constitutes a false designation of

origin and/or unfair competition.

3. Enters a temporary restraining order, a preliminary

and permanent injunction order, enjoining Defendants, their

officers, agents, servants, employees, attorneys, parents,

subsidiaries and related companies and all persons acting for,

with, by, through or under them, and each of them, in the

Western Half of Puerto Rico’s Main Island as the term has been

herein defined (The municipalities of Arecibo, Utuado, Jayuya

and Ponce and all towns to the west of these), from:

A. Utilizing the trademarks “ORO CENTRO” and/or “JCC

ORO CENTRO” in relation to any pawnshop and/or jewelry

store;

B. Willfully and unlawfully trading upon Plaintiffs

goodwill and reputation through its unauthorized use of the

“ORO CENTRO” and/or “JCC ORO CENTRO”.

C. Soliciting any business under the “ORO CENTRO”

mark;

D. Passing themselves off as being associated with

Plaintiffs; and,

E. Committing any other unfair business practices

directed towards obtaining for themselves the business and

customers of Plaintiffs.


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4. Defendants be directed to file with this Honorable

Court and serve on Plaintiffs, within fifteen (15) days after

issuance and service of the injunction, a report in writing

under oath setting forth in detail the manner and form in which

Defendants have complied with the injunction, and that

Defendants be further directed to show positive proof that they

will not use the “ORO CENTRO” and/or “JCC ORO CENTRO” marks, or

any similar designation, in connection with any pawnshop and/or

jewelry store type business in the Western Half of Puerto Rico’s

Main Island, including the municipalities of Arecibo, Utuado,

Jayuya and Ponce, including said municipalities.

5. Since Plaintiffs’ use of the mark, “ORO CENTRO” pre-

dates Defendants’ use of the mark “ORO CENTRO” and/or “JCC ORO

CENTRO”, Defendants shall be permanently enjoined from obtaining

or seeking registration of its alleged marks, or any other mark

similar to that of Plaintiffs.

6. Plaintiffs be awarded the damages incurred as a result

of Defendants’ unfair competition and other acts complained of

herein, together with such additional sums as this Honorable

Court may assess.

7. An accounting be ordered for determination of and

payment to Plaintiffs of all profits realized by Defendants by

reason of its unlawful acts alleged herein.


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8. Plaintiffs are awarded treble damages based upon

Defendants’ willful infringement.

9. Plaintiff be awarded reasonably attorneys’ fees,

taxable costs, and disbursements of this action, pursuant to 15

U.S.C. §1117, based on Defendants’ willful infringement.

10. Plaintiff have such other and further relief as this

Honorable Court may deem appropriate to prevent the public from

deriving the erroneous impression that any services provided by

or promoted by Defendants are authorized by Plaintiffs or

related in any way to Plaintiffs or their services.

11. Plaintiffs request a jury trial on all issues so

triable.

UNSWORN STATEMENT UNDER PENALTY OF PERJURY

I, Humberto Ruiz Garay, of legal age, married,

entrepreneur, President of Oro Centro, Inc., and resident of

Puerto Rico, hereby states under penalty of perjury, pursuant to

the laws of the United States of America, 28 U.S.C. § 1746, that

a translation of the relevant factual allegations and claims

herein detailed has been provided and/or explained to me, and

that to the best of my knowledge and belief and/or pursuant to

the information and documents in possession of Oro Centro, Inc.,

or its employees, representatives and/or advisors, all

allegations herein contained are true and correct.


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Yo, Humberto Ruiz Garay, mayor de edad, casado,

comerciante, Presidente de Oro Centro, Inc., y residente de

Puerto Rico, mediante la presente indico so pena de perjurio, de

conformidad con las leyes de los Estados Unidos de America, 28

U.S.C. § 1746, que una traducción de las alegaciones de hechos

relevants y las reclamaciones aqui contenidad me ha sido

provista o explicada, y que de conformidad con mi mejor

conocimiento y creencia, y/o de conformidad con información y

documentos en posesión de Oro Centro, Inc., o sus empleados,

representantes y/o asesores, todas las alegaciones aquí

contenidas son ciertas y correctas.

_______________________ Humberto Ruiz Garay

RESPECTFULLY SUBMITTED. In San Juan, Puerto Rico, this 29th day of November of 2010.

SEPULVADO & MALDONADO, PSC

Attorneys for Huberto Ruiz Garay, Cándida

Sambolín Bonilla, and Oro Centro, Inc.

Citibank Tower, Suite 1900 252 Ponce de Leon Avenue

San Juan, P.R. 00918 Phone 787.765.5656 Fax 787.294.0073


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s/Lee Sepulvado-Ramos

Lee Sepulvado-Ramos USDC-PR No. 211912

[email protected]

s/Albéniz Couret-Fuentes

Albéniz Couret-Fuentes USDC-PR No. 222207 [email protected]


Oro Centro Complaint

Documents

Transcript of Oro Centro Complaint