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Internet Trademark Case Summaries

Bavaro Palace, S.A. v. Vacation Tours, Inc.

2006 WL 2847233 (11th Cir. Oct. 2, 2006)

Plaintiff owned the Barceló Bavaro Beach Resort hotel on the Bavaro Beach in the Dominican Republican.  Defendant operated a wholesale and retail travel agency that sold travel packages to the Dominican Republic and other places.  Defendant was an authorized distributor for the Barceló Bavaro Palace but those contracts ended in 2002 or 2003.  Defendant registered the domain name “bavaropalace.com” through an agent in 2001 and used it to advertise the Barceló Bavaro Palace and competing hotels on Bavaro Beach.  Plaintiff sued for trademark infringement and cybersquatting.  Following a bench trial, the district court held that plaintiff failed to prove that it had ever advertised its hotel as the “Bavaro Palace” without the term “Barceló.”  It also held that plaintiff could not establish secondary meaning or a likelihood of confusion because the mark “Bavaro Palace” was composed of the geographic term “Bavaro” and the generic term “palace,” which the court held to mean “an upscale hotel.”  The district court also held that plaintiff failed to prove any of the elements of its cybersquatting claim.  On appeal, the Eleventh Circuit affirmed the lower court’s decision on the infringement and cybersquatting claims, agreeing with the district court that BAVARO PALACE was descriptive without secondary meaning.