[D O NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FILED

F O R THE ELEVENTH CIRCUIT U.S. COURT OF APPEALS

ELEVENTH CIRCUIT

OCTOBER 2, 2006

THOMAS K. KAHN

N o . 05-14824

CLERK

D . C. Docket No. 04-20422-CV-JLK

B A V A R O PALACE, S.A., a foreign corporation,

Plaintiff-Counter-

Defendant-Appellant,

BAVARO BEACH, S.A., a foreign corporation, et al.,

Plaintiffs-

Counter-Defendants,

versus

VACATION TOURS, INC.,

a.k.a. Vacation Store of Miami, Inc.,

VACATION TOURS OF SOUTH BEACH, INC.,

a dissolved Florida corporation,

ROSANNA METZ-MENDEZ,

an individual,

ALEXANDRA ALVAREZ,

an individual,

Defendants-Counter-

Claimants-Appellees.

A p p e al from the United States District Court fo r the Southern District of Florida (October 2, 2006) B e fo r e TJOFLAT and CARNES, Circuit Judges and HODGES,* District Judge.

C A R N E S , Circuit Judge: T h e plaintiff, Bavaro Palace, appeals the district court's entry of final ju d g m en t on all claims in favor of the defendants, Vacation Tours and Rosanna M etz-M en d ez. The entry of judgment followed a bench trial. We affirm the d is tr ic t court on the Lanham Act and Anticybersquatting Consumer Protection Act claim s, but we vacate the district court's decision on the Florida Deceptive and U n fair Trade Practices Act claim and remand for entry of fact findings and co n clu sio n s of law in compliance with Rule 52(a) of the Federal Rules of Civil P r o c ed u r e.

I.

T h e Barceló Bavaro Palace is one of five hotels in a complex known as the B arceló Bavaro Beach Resort located on Bavaro Beach in the Punta Cana region of th e Dominican Republic. Opened in 1992, the hotel is part of an international ch ain owned and operated by the plaintiff, Bavaro Palace, S.A. The Barceló B av aro Palace is marketed under a two-tier advertising system. The first tier targ ets corporate clients and involves the distribution of pamphlets, brochures and p ro m o tio n al videos. The second tier of promotion is through "co-op marketing" w h e r e authorized distributors work together to market certain hotels using printed ad s, brochures, television and radio. In the joint pretrial stipulations, the parties a g r ee d that the proper name of the hotel is "Barceló Bavaro Palace." Vacation Tours is a wholesale and retail travel agency offering travel p ack ag es to the Dominican Republic and other locations. It has offices in both M ia m i Beach and Coral Gables, Florida. In past years, Vacation Tours contracted w ith the plaintiff's parent company to become an authorized distributor for acco m m o d atio n s at the Barceló Bavaro Palace. Those contracts ended sometime b e tw e en 2002 and 2003. While Vacation Tours is no longer an authorized dealer fo r the plaintiff, it is for several hotels in the area that compete with the plaintiff.

Even after the distributorship agreement dissolved, Vacation Tours continued to b o o k rooms at the Barceló Bavaro Palace for its customers through other agencies, su ch as Hotel Beds and Go Go Tours.

T h e plaintiff claims that Vacation Tours engaged in a "bait and switch" sch em e whereby it would convince customers who specifically requested a Barceló b ran d hotel to reserve rooms with a competing property instead. The trial court, h o w ev er, found that Vacation Tours honored specific customer requests, even if it m ean t booking a hotel that it did not promote.

In 2001 a consultant for Vacation Tours registered the domain name b av aro p alace.co m to advertise the Barceló Bavaro Palace and competing hotels on B av aro Beach. The website lists the phone numbers for Vacation Tours. Clicking o n the individual hotels also directs browsers to Vacation Tours' phone numbers.

Vacation Tours does not use the term "bavaropalace.com" as any part of its b u sin ess name.

On February 1, 2004, Vacation Tours ran a series of advertisements in The M ia m i Herald and El Nuevo Herald for tour packages that included a cc o m m o d a tio n s at the Barceló Bavaro Palace. The advertisements included V acatio n Tours' phone numbers and the web address, bavaropalace.com. Two d a y s later, a promotions and marketing representative for the plaintiff traveled fro m the Dominican Republic to Miami to meet with Rosanna Metz-Mendez, the p resid en t, chief officer, and sole director of Vacation Tours. The representative a sk e d Metz-Mendez to stop running the print ads, and she agreed. The parties d isp u te whether the representative also asked Metz-Mendez to discontinue use of th e web address. The plaintiff asserts that he did but Metz-Mendez denies that.

On February 5, 2004, the ad again ran in The Miami Herald. The plaintiff sen t a cease and desist letter on February 11, 2004, demanding that within two days o f receipt Vacation Tours send written confirmation that it had stopped using the b av aro p alace.co m web address. Vacation Tours did not respond to the letter and co n tin u ed to use the domain name.

On February 20, 2004, the plaintiff filed a complaint against Vacation Tours an d Metz-Mendez, alleging, among other things, violations of the Lanham Act, the A n ticyb ersq u attin g Consumer Protection Act, and the Florida Deceptive and U n fair Trade Practices Act ("FDUTPA"). Vacation Tours filed a counterclaim, but it was voluntarily dismissed during trial. After a three day bench trial, the court en tered judgment in favor of the defendants on all claims. The district court found th a t the plaintiff failed to introduce evidence at trial indicating that the hotel was ad v ertised or promoted as "Bavaro Palace" without the "Barceló" modifier. All m ark etin g materials offered by the plaintiff referred to the hotel as the "Barceló B av aro Palace," and that is how the hotel is known in the industry. The district co u rt found no evidence that the hotel had ever been marketed under the name "B a v a ro Palace." The district court concluded from the evidence that "Bavaro Palace" was a d escrip tiv e mark, composed of the geographic term "Bavaro," which refers to a sp ecific segment of beach, combined with the generic industry term "palace," w h ich means an upscale hotel. The court reasoned that the plaintiff could not p rev ail on its Lanham Act claim because it could show neither secondary meaning n o r likelihood of confusion. The court also determined that the plaintiff had failed to prove any of the elements necessary for its Anticybersquatting Consumer P ro tectio n Act claim. Although the district court failed to discuss the FDUTPA claim in its opinion, it did enter judgment for Vacation Tours on all counts.

II.

W e review a district court's conclusions of law de novo, and we review fin d in g s of fact for clear error. MiTek Holdings, Inc. v. Arce Eng'g Co., Inc., 89 F .3 d 1548, 1554 (11th Cir. 1996). Rule 52(a) requires that the facts be found sp ecifically and that the conclusions of law be stated separately; the purpose of th o s e requirements is to "provide a sufficiently definite predicate for proper ap p ellate review." Hydrospace-Challenger, Inc. v. Tracor/MAS, Inc., 520 F.2d 1 0 3 0 , 1033­34 (5th Cir. 1975).

III.

A.

T h e Lanham Act unfair competition claim arises under 15U.S.C. § 1125(a). In order to establish a protect able mark, a plaintiff must show that the mark is eith er inherently distinctive or has acquired secondary meaning. Montgomery v. N o g a , 168 F.3d 1282, 1300 (11th Cir. 1999). Because the mark in this case was n o t inherently distinctive, the plaintiff's case depended on showing that it had secondary meaning, defined as "the connection in the consumer's mind between th e mark and the product's producer." Gift of Learning Found., Inc. v. TGC, Inc., 3 2 9 F.3d 792, 800 (11th Cir. 2003).

We have held that the "[p]laintiff has the burden of sustaining a high degree o f proof in establishing a secondary meaning for a descriptive term." Investacorp, In c. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1525 (11th C ir . 1991). There are four factors to consider in determining whether a mark has a cq u ir ed secondary meaning: "(1) the length and manner of its use; (2) the nature an d extent of advertising and promotion; (3) the efforts made by the plaintiff to p ro m o te a conscious connection in the public's mind between the name and the p lain tiff's product or business; and (4) the extent to which the public actually id en tifies the name with the plaintiff's product or venture." Conagra Inc. v. S in g leto n , 743 F.2d 1508, 1513 (11th Cir. 1984).

The district court properly determined that the actual protect able name is "B arceló Bavaro Palace," while the asserted mark, "Bavaro Palace," is merely d e s cr ip tiv e . "Bavaro" refers to a specific section of beach in the Punta Cana area o f the Dominican Republic, and "Palace" is a common industry term for a high-end h o tel. The district court concluded that the plaintiff had failed to establish the n ecessary consumer connection between the mark and the hotel, as all marketing m aterials and even the sign on the hotel itself read "Barceló Bavaro Palace" not "B a v a ro Palace." There is simply no secondary meaning in the mark "Bavaro P a la c e ." We see no clear error in the district court's determination that both the in d u stry and the public at large know the hotel as the "Barceló Bavaro Palace," nor in its conclusion that there is no protect able interest in the asserted mark "Barceló P alace. Because there was no protect able interest in the asserted mark, the c o n s u m e r confusion analysis is immaterial. Gift of Learning Found., 329 F.3d at 8 0 1 ("T h e confusion that plaintiff claims exists is irrelevant unless the mark is p ro tect able in the first instance.").

B.

T h e district court did not err in rejecting the plaintiff's Anticybersquatting C o n s u m e r Protection Act ("ACPA"), 15U.S.C. § 1125(d), claim. To prevail under th e ACPA, a plaintiff must prove that (1) its mark is distinctive or famous and en titled to protection; (2) the defendant's domain name is identical or confusingly sim ilar to the plaintiff's mark; and (3) the defendant registered or used the domain n am e with a bad faith intent to profit. Shields v. Zuccarini, 254 F.3d. 476, 482 (3d C ir. 2001).

The district court did not clearly err in the fact findings underlying its co n clu sio n s that the plaintiff had not proven any of the three elements necessary to m ak e out a viable ACPA claim. Any error in the district court's thinking that a m ark must be both distinctive and famous for these purposes is harmless. The p lain tiff failed to prove that the mark "Bavaro Palace" was either distinctive or fam o u s, and as we have noted, it is not entitled to protection as a descriptive mark.

Nor did the plaintiff establish that "bavaropalace.com" was confusingly similar to "B a rc eló Bavaro Palace" or that Vacation Tours acted with bad faith. The district co u rt properly dismissed this claim.

C.

T h e district court also entered judgment against the plaintiff on the FDUTPA claim . Because the court did not explain its reasoning, however, we do not know th e basis for its ruling.

The Florida statute protects against any "[u]nfair methods of competition, u n co n scio n ab le acts or practices, and unfair or deceptive acts or practices in the co n d u ct of any trade or commerce . . . ." Fla. Stat. Ann. § 501.204(1) (West 2006). W e said in Gift of Learning, 329 F.3d at 802, that a FDUTPA claim fails where the p la in tif f is unable to show a protect able mark, but that case focused on trademark in frin g em en t and did not involve any allegations of a "bait and switch" scheme.

Id. at 797. A Florida court has yet to apply this statute to facts like these.

Still, this Court noted parenthetically in Gift of Learning "that the analysis of th e Florida statutory and common law claims of trademark infringement and unfair c o m p e titio n is the same as under the federal trademark infringement claim." Id. at 8 0 2 (citing Investacorp Inc., 931 F.2d at 1521); see also Planetary Motion, Inc. v. T e ch s p lo s io n , Inc., 261 F.3d 1188, 1193 n.4 (11th Cir. 2001) ("Courts may use an an alysis of federal infringement claims as a `measuring stick' in evaluating the m erits of state law claims."). FDUTPA specifically notes that "due consideration an d great weight shall be given to the interpretations of the Federal Trade C o m m issio n and the federal courts," Fla. Stat. Ann. § 501.204(2) (West 2006).

The Code of Federal Regulations defines "bait advertising" as: an alluring but insincere offer to sell a product or service which th e advertiser in truth does not intend or want to sell. Its p u r p o s e is to switch consumers from buying the advertised m e rc h a n d is e, in order to sell something else, usually at a higher p rice or on a basis more advantageous to the advertiser. The p rim ary aim of a bait advertisement is to obtain leads as to p erso n s interested in buying merchandise of the type so a d v e r tis e d .

1 6 C.F.R. § 238.0 (2006). Additionally, the Florida legislature's purpose in d raftin g FDUTPA may guide the district court's decision about this claim. The statu te was enacted "[t]o protect the consuming public and legitimate business en terp rises from those who engage in unfair methods of competition, or u n co n scio n ab le, deceptive, or unfair acts or practices in the conduct of any trade or co m m erce." Fla. Stat. Ann. § 501.202(2) (West 2006).

Because the district court failed to set out findings of fact about the a lle g a tio n s that Vacation Tours ran a "bait and switch" scheme and did not specify th e conclusions of law underlying its decision about that claim, we vacate the part o f the decision disposing of the FDUTPA claim and remand it for compliance with R u le 52(a).

T h e judgment of the district court is AFFIRMED insofar as it concerns the L an h am Act and Anticybersquatting Consumer Protection Act claims, but it is V A C A T E D insofar as it concerns the Florida Deceptive and Unfair Trade P ractices Act claim, and the case is REMANDED for further proceedings related to that claim as specified in this opinion.

* The Honorable William Terrell Hodges, United States District Judge for the Middle District of Florida, sitting by designation.