Wooster Floral & Gifts, L.L.C. v. Green Thumb Floral & Garden Ctr., Inc. (Slip Opinion) ( 2020 )

[Until this opinion appears in the Ohio Official Reports advance sheets, it may be cited as
Wooster Floral & Gifts, L.L.C. v. Green Thumb Floral & Garden Ctr., Inc., Slip Opinion No.
2020-Ohio-5614.]
NOTICE
This slip opinion is subject to formal revision before it is published in an
advance sheet of the Ohio Official Reports. Readers are requested to
promptly notify the Reporter of Decisions, Supreme Court of Ohio, 65
South Front Street, Columbus, Ohio 43215, of any typographical or other
formal errors in the opinion, in order that corrections may be made before
the opinion is published.
SLIP OPINION NO. 2020-OHIO-5614WOOSTER FLORAL & GIFTS, L.L.C., APPELLANT, v. GREEN THUMB FLORAL &
GARDEN CENTER, INC., APPELLEE.
[Until this opinion appears in the Ohio Official Reports advance sheets, it
may be cited as Wooster Floral & Gifts, L.L.C. v. Green Thumb Floral &
Garden Ctr., Inc., Slip Opinion No. 2020-Ohio-5614.]
Civil law—Deceptive Trade Practices Act—Customer confusion must be measured
based on a customer’s confusion about the source of the goods that are
offered for sale—Court of appeals’ judgment affirmed.
(No. 2019-0322—Submitted May 12, 2020—Decided December 15, 2020.)
APPEAL from the Court of Appeals for Wayne County, No. 17AP0026,
2019-Ohio-63.
_________________
DEWINE, J.
{¶ 1} This case involves a dispute between two flower shops about the use
of a domain name. Green Thumb Floral & Garden Center, Inc. (“Green Thumb”)
owns the domain name www.woosterfloral.com. Internet users who click on that
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address are directed to Green Thumb’s home page. This does not sit well with one
of its competitors, Wooster Floral & Gifts, L.L.C., which filed a lawsuit under
Ohio’s Deceptive Trade Practices Act, seeking to block Green Thumb from using
the woosterfloral.com address.
{¶ 2} For Green Thumb’s actions to constitute a deceptive trade practice,
its use of the domain name must create a likelihood of customer confusion about
“the source, sponsorship, approval, or certification of goods or services.” R.C.
4165.02(A)(2). We find no evidence of such customer confusion. Green Thumb’s
website makes it perfectly clear to internet users who end up on that site that they
are ordering goods from Green Thumb. Because the court below saw things pretty
much the same way, we affirm its judgment.
I. BACKGROUND
A. Wooster Floral & Gifts acquires the trade name “Wooster Floral” from
its predecessor but not the domain name “woosterfloral.com”
{¶ 3} Wooster Floral, L.L.C., was a flower and gift shop that did business
in Wooster, Ohio, from 2000 to 2015. The business owned a few domain names,
including www.woosterfloralandgifts.com and www.woosterfloral.com. In late
2014, the shop’s owner, Kimberly Gantz, decided to close the business. Toward
that end, she did not renew the registration of the “woosterfloral.com” domain.
{¶ 4} After Gantz announced her intention to shut down, the store’s
manager, Katrina Heimberger, expressed an interest in buying the business.
Heimberger and Gantz entered into a purchase agreement in January 2015. The
contract specified that Heimberger was “not purchasing the business” but rather
certain assets and inventory, including the use of the name Wooster Floral, for $1.
{¶ 5} Heimberger subsequently recorded the articles of organization for
Wooster Floral & Gifts, L.L.C., with the Ohio secretary of state, as well as an
assignment of the trade name “Wooster Floral, L.L.C.,” to herself. Gantz then
dissolved Wooster Floral in late 2015.
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{¶ 6} Green Thumb is a competing floral and gift shop in Wooster. It has
been in business for more than 50 years. At the end of 2014, Green Thumb’s owner,
Claudia Grimes, learned that Gantz was about to close Wooster Floral. Discovering
that “woosterfloral.com” was available, Grimes purchased the name from a
domain-name registrar in January 2015 and started using it to redirect internet users
to Green Thumb’s website: www.greenthumbfloralandgifts.com. Green Thumb
uses several other domain names for the same purpose, including
“woosterflowers.com” and “woosterflorist.com.”
{¶ 7} When Heimberger started Wooster Floral & Gifts, she knew that
Gantz no longer owned the “woosterfloral.com” domain and that Grimes had
purchased it. Nonetheless, Heimberger asked Grimes to give up the domain name.
After some back and forth, Grimes offered to sell the domain name to Heimberger
for $2,500, but Heimberger refused, finding the price too steep.
B. Wooster Floral & Gifts sues the owner of the domain name
“woosterfloral.com”
{¶ 8} In 2016, Wooster Floral & Gifts sued Green Thumb, alleging
trademark infringement in violation of R.C. 1329.65 and a violation of the
Deceptive Trade Practices Act, R.C. 4165.02(A)(2). Wooster Floral & Gifts sought
an injunction requiring Green Thumb to surrender the domain name as well as
damages and attorney’s fees.
{¶ 9} The case proceeded to a bench trial. At trial, Wooster Floral & Gifts
presented screenshots of the redirected website taken in early 2015. The landing
page of the site looked like this:
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{¶ 10} The only evidence that Wooster Floral & Gifts offered that any
customer had actually been confused concerned a negative review posted on
Wooster Floral & Gifts’ Google Plus page. Heimberger testified that she responded
to the review, writing that “[i]t sounds like you may have ordered your flowers from
1-800-flower.com and that another business filled this order.” Grimes admitted
that Green Thumb had filled the order that was the subject of the negative review.
But she also testified that she had received that order through BloomNet, a wire
service, not through www.woosterfloral.com. The customer who wrote the review
did not testify.
{¶ 11} The trial court ruled in favor of Green Thumb, concluding that
Wooster Floral & Gifts’ trademark infringement claims failed because it did not
have a registered trademark. Wooster Floral & Gifts did not challenge this holding
on appeal. Regarding the claims under the Deceptive Trade Practices Act, the trial
court found that Wooster Floral & Gifts possessed a valid trade name, “Wooster
Floral,” but could not enjoin others from using that name unless there was proof of
likelihood of confusion. The court found that Green Thumb’s use of the domain
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name was unlikely to cause confusion as to the source of goods or services,
explaining that “[t]he home page is clearly identified as ‘Green Thumb Floral’ ”
and that there is no use of the trade name “Wooster Floral” within the website.
{¶ 12} Wooster Floral & Gifts appealed, challenging the finding that there
was no violation of the Deceptive Trade Practices Act. The Ninth District Court of
Appeals affirmed. It found nothing within Green Thumb’s website that would
suggest a customer might be confused about which company is providing the goods
for sale. One judge dissented, opining that there was a likelihood of confusion
based on the application of an eight-factor test utilized by the Sixth Circuit Court
of Appeals in determining the likelihood of confusion for claims under the federal
Lanham Act. 2019-Ohio-63, 118 N.E.3d 513, ¶ 16 (Callahan, J., dissenting), citing
Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648
(6th Cir.1982).
{¶ 13} We accepted Wooster Floral & Gifts’ appeal on the following
proposition of law:
A competing business owner’s use of a competitor’s legally
valid trade name in a domain name to divert consumers to the
competing business’s website is a deceptive trade practice under
R.C. 4165.02(A)(2) and is analyzed for likelihood of confusion at
the time the trade name is used in the domain name, not by the
content on the competing business’s website.
See 155 Ohio St.3d 1455, 2019-Ohio-1759, 122 N.E.3d 216.
II. ANALYSIS
{¶ 14} R.C. 4165.02(A)(2) provides that “[a] person engages in a deceptive
trade practice when, in the course of the person’s business,” the person “[c]auses
likelihood of confusion or misunderstanding as to the source, sponsorship,
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approval, or certification of goods or services.” If a party is likely to be damaged
by a deceptive trade practice under R.C. 4165.02, a court may grant injunctive relief
and award actual damages. R.C. 4165.03(A)(1) and (2).
{¶ 15} In the proceeding below, the Ninth District assumed that a party who
seeks injunctive relief for a violation of the Deceptive Trade Practices Act must
establish a violation by clear and convincing evidence. Wooster Floral & Gifts did
not challenge the use of that standard in its merit brief to this court, although it did
raise the issue in its reply brief. But, of course, a party cannot raise an issue for the
first time in a reply brief. State v. Spaulding, 151 Ohio St.3d 378, 2016-Ohio-8126,
89 N.E.3d 554, ¶ 179. So we have no occasion to examine the correct burden of
proof for a claim under the Deceptive Trade Practices Act. We note, though, that
even were we to apply a preponderance of the evidence standard, we would still
conclude that Wooster Floral & Gifts has failed to meet its burden to demonstrate
customer confusion about the source of goods or services.
A. The statute requires a likelihood of confusion as to the source of the goods
{¶ 16} Wooster Floral & Gifts’ position is that there is a likelihood of
customer confusion because a consumer who opens a web browser and types in
“woosterfloral.com” will be directed not to its website but to Green Thumb’s
website. In its view, the act of redirecting—by itself—creates a likelihood of
confusion. Green Thumb counters that the customer is not ultimately confused at
all because once he or she arrives at the Green Thumb website, the site makes
perfectly clear that one is ordering goods from Green Thumb. Thus, the dispute
depends in large part on what kind of confusion the law proscribes: confusion about
where the words “woosterfloral.com” typed into a web browser will lead or
confusion about who is selling the products that a web user may ultimately choose
to purchase.
{¶ 17} The plain language of the statute answers the question. The statute
reaches conduct that “[c]auses likelihood of confusion or misunderstanding as to
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the source, sponsorship, approval, or certification of goods or services.” (Emphasis
added.) R.C. 4165.02(A)(2). Thus, to run afoul of the statute, there must be a
likelihood of confusion about the source of the goods and services not about where
a particular domain name might lead.
{¶ 18} Wooster Floral & Gifts has failed to present any such evidence.
Under the plain language of the statute, whether internet users are initially confused
about the origin of a website does not matter; rather, the plaintiff must show a
likelihood of confusion that goes to the source of the goods or services. The
redirected website, Green Thumb’s home page, clearly demonstrates Green
Thumb’s name, logo, and address and makes no mention of the trade name
“Wooster Floral” within the website. Any reasonable internet user looking at the
website can tell that it is Green Thumb that is providing the goods and that there is
no indication of sponsorship, approval, or certification of goods by another entity.
And a consumer who doesn’t want to be there can quickly extricate himself by
hitting ←.
{¶ 19} Any likelihood of confusion is further mitigated by the fact that
Wooster Floral & Gifts is, at best, a fairly weak trade name.1 The more distinctive
a trade name is, the stronger it is and the greater the likelihood of confusion and the
scope of protection. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 11:73 (5th Ed.2018); 1 McCarthy at Section 9:1. Wooster
Floral is not a distinctive name like Kodak or John Deere that a customer strongly
and immediately associates with a particular brand. See generally Abercrombie &
1. The trial court’s conclusion that Wooster Floral is a valid trade name has not been challenged on
appeal, so we must assume the correctness of that decision. A trade name is descriptive of the
identity of the owner of the business and need not be affixed to the product, although it may serve
to identify not only the business but also the product. Younker v. Nationwide Mut. Ins. Co., 175
Ohio St. 1, 5, 191 N.E.2d 145, 148 (1963). In contrast, a trademark is a sign, word or device affixed
to a product that identifies the goods of a particular seller and distinguishes them from the goods
sold by another. Id. The definitions of the two overlap to some extent, and this court has stated that
“[t]he basic principles governing trademarks and trade names are the same.” Id. at 6.
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Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976) (Friendly, J.); Kellogg
Co. v. Toucan Golf, Inc., 337 F.3d 616, 624 (6th Cir.2003). Rather, it is a trade
name that is geographically descriptive of the business—Wooster Floral & Gifts is
a floral shop in Wooster. Geographically descriptive marks are generally
considered weaker than marks that are inherently distinctive. Restatement of the
Law 3d, Unfair Competition, Section 21, Comment i, at 232-233 (1995). It is
plausible that a customer might type woosterfloral.com into a website because they
are looking for Wooster Floral & Gifts’ website. But a consumer might also type
the address simply because they are looking for a floral shop in Wooster. A
reasonable internet user might assume that JohnDeere.com will likely lead to John
Deere’s website, but that same user is much less likely to assume that
woosterfloral.com will lead to a particular flower shop.
{¶ 20} In sum, there is nothing before us to suggest that Green Thumb’s use
of the woosterfloral.com domain name creates customer confusion about the
source, sponsorship, approval, or certification of goods or services. See R.C.
4165.02(A)(2). Wooster Floral & Gifts has failed to produce evidence of a single
consumer that has suffered any such confusion. And nothing in the evidence
suggests that any reasonable consumer would be likely to suffer any confusion
about the source of the goods listed for sale on Green Thumb’s website. Thus,
under the plain terms of the Deceptive Trade Practices Act, Wooster Floral & Gifts
has failed to establish a violation.
B. Federal caselaw under the Lanham Act does not help Wooster Floral &
Gifts
{¶ 21} Wooster Floral & Gifts relies primarily on federal cases decided
under the Lanham Act that it says support its argument that confusion should be
measured at the point in which a person initially types woosterfloral.com into a web
browser. We are not convinced that these federal cases lend much assistance to its
cause.
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{¶ 22} The Lanham Act contains several provisions that have been applied
in domain-name disputes. Most notably, the Lanham Act contains an explicit
anticybersquatting provision that makes a person liable in certain circumstances for
the registration or use of a domain name with the bad-faith intent to profit when the
domain name contains or is similar to a trademark held by another. 15 U.S.C.
1125(d); College Savs. Bank v. Florida Prepaid Postsecondary Edn. Expense Bd.,
527 U.S. 666, 119 S.Ct. 2219, 144 L.Ed.2d 605 (1999). Importantly, Ohio’s
Deceptive Trade Practices Act does not contain a comparable provision.
{¶ 23} In addition, two other provisions of the Lanham Act have been
applied to domain-name disputes. Section 32(a) of the Lanham Act makes it a
violation to use a registered trademark in connection with the sale of goods or
services when the use of the mark is likely to create customer confusion. Act of
Nov. 29, 1999, ch. 540, 113 Stat. 219, codified at 15 U.S.C. 1114(1). Section 43(a)
of the Lanham Act is the provision that is the most similar to Ohio’s Deceptive
Trade Practices Act, and Wooster Floral & Gifts maintains that it provides for
liability on the same terms as the Ohio statute. Id., codified at 15 U.S.C. 1125(a)(1).
{¶ 24} That section provides for liability on the part of
[a]ny person who, on or in connection with any goods or
services * * * uses in commerce any word, term, name, * * * or any
combination thereof, * * * which is likely to cause confusion, or to
cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person * * *.
15 U.S.C. 1125(a)(1)(A).
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{¶ 25} This language is similar in some respects to Ohio’s statute but
different in other respects. (The most notable difference is the federal statute’s
explicit reference to the use of any “word, term [or] name.”) We are bound by the
language of the Ohio statute not by a federal court’s interpretation of a federal
statute. Thus, while federal cases may provide some guidance in analyzing issues
in this area, they offer only that—guidance to the extent that we find their analysis
useful.
{¶ 26} The guidance that is supplied by the federal cases is not particularly
helpful to Wooster Floral & Gifts. The theory advanced by Wooster Floral & Gifts
has some similarities to a doctrine adopted by some federal circuits that has come
to be termed “initial interest confusion.” See, e.g., Playboy Ents., Inc. v. Netscape
Communications Corp., 354 F.3d 1020 (9th Cir.2004). The idea here is that
customer confusion may be shown by the deceptive use of a trade name that sparks
a consumer’s initial interest in a product, even if that confusion is dispelled before
any sale occurs. Id. at 1025; see also 5 McCarthy, Section 25A:44, at 25A-182
through 25A-187.
{¶ 27} Wooster Floral has never explicitly relied upon the initial-interest-
confusion doctrine nor has it asked this court to adopt the doctrine. Nevertheless,
the dissent seizes on this somewhat controversial theory2 and insists—without
2. The dissent’s view that the initial-interest-confusion doctrine “is neither novel nor controversial,”
dissenting opinion at ¶ 44, is not widely shared. See, e.g., Ritter & Jaffe, The Uncertain Future of
Initial Interest Confusion, 4 Landslide 55 (2012) (“Initial interest confusion was a controversial
doctrine from its inception and remains so today”); Goldman, Deregulating Relevancy in Internet
Trademark Law, 54 Emory L.J. 507, 559 (2005) (“The ‘initial interest confusion’ doctrine * * *
exemplifies the devolution of trademark law”); Singh, Abolish Trademark Law’s Initial Interest
Confusion and Permit Manipulative Internet Search Practices, 3 J.Bus. Entrepreneurship & L. 15,
31 (2009) (“Initial interest confusion is a flawed doctrine because it does not require a showing of
likelihood of confusion, it is superfluous and inefficient, and it is also unnecessary in the Internet
context, so courts should not utilize it in evaluating trademark infringement”); Klein & Glazer,
Reconsidering Initial Interest Confusion on the Internet, 93 Trademark Rep. 1035, 1064 (2003)
(“[T]he initial interest confusion doctrine is unnecessary to resolve the cases in which courts have
applied the doctrine”); Rothman, Initial Interest Confusion: Standing at the Crossroads of
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analysis—that we recognize the doctrine. Further, the dissent would have us also
adopt an eight-factor test used by the Sixth Circuit in Lanham Act cases and remand
this case for application of that test to the initial-interest-confusion theory. See
Frisch’s Restaurants, Inc., 670 F.2d at 648 (adopting the eight factors used by the
Ninth Circuit in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th
Cir.1979)).
{¶ 28} Though the dissent cites a few trademark cases in which federal
circuit courts have recognized the idea of initial-interest confusion, it fails to
acknowledge that the federal circuits largely have found the initial-interest-
confusion theory inapplicable in situations like ours where any initial confusion is
quickly dissipated once the consumer lands on the website. This is for good reason.
Despite the differences in language, the Lanham Act is understood to impose the
same customer-confusion requirement as the Ohio statute: there must be “confusion
as to the origin of the parties’ goods or services.” Bird v. Parsons, 289 F.3d 865,
877 (6th Cir.2002).
{¶ 29} For this reason, even those federal circuit courts recognizing the
possibility of liability under such a theory have been reluctant to find a violation of
section 32(A) or 43(A) of the Lanham Act in the context of internet-domain-name
disputes. This is particularly the case when a website on which a consumer
ultimately lands makes its affiliation clear. For example, in a case in which a
computer company made use of the domain name clue.com, the First Circuit upheld
a trial court’s finding that no trademark infringement occurred on a claim brought
by the manufacturer of the board game Clue. Because the website’s content
strongly indicated that the site had little to do with the trademark owner’s business,
Trademark Law, 27 Cardozo L.Rev. 105, 113 (2005) (“Initial interest confusion must be revisited
and replaced”).
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the First Circuit saw no reason to “enter the ‘initial interest confusion’ thicket.”
Hasbro, Inc. v. Clue Computing, Inc., 232 F.3d 1, 2 (1st Cir.2000).
{¶ 30} Similarly, in a lawsuit brought by Reverend Jerry Falwell, the Fourth
Circuit found no likelihood of confusion in a detractor’s use of the domain name
Fallwell.com on a “gripe site” established to criticize Falwell. Lamparello v.
Falwell, 420 F.3d 309, 317-318 (4th Cir.2005). “[E]ven if [it] were to accept the
initial interest confusion theory,” the court “would not apply [it to] the case at
hand.” Id. at 318. That is because to determine whether a likelihood of confusion
exists as to the source of such a site, “a court must look not only to the allegedly
infringing domain name, but also the underlying content of the website.” Id.Because the contents of the website made clear that it was not affiliated with
Falwell, there was no likelihood of customer confusion. Id. at 311, 318; see also
Passport Health, L.L.C. v. Avance Health Sys. Inc., 823 Fed.Appx. 141, 150 (4th
Cir.2020) (“As in Lamparello, we decline to adopt the [initial-interest-confusion]
doctrine here”).
{¶ 31} The Ninth Circuit, too, has found little danger of consumer
confusion when the content of a website makes its affiliation clear. Outside of the
special case of a website domain that consists solely of a trademarked name (e.g.,
JohnDeere.com), “consumers don’t form any firm expectations about the
sponsorship of a website until they’ve seen the landing page—if then. This is
sensible agnosticism, not customer confusion.” Toyota Motor Sales, U.S.A., Inc. v.
Tabari, 610 F.3d 1171, 1179 (9th Cir.2010). Indeed, reasonable internet users
“fully expect to find that some sites are not what they imagine based on a glance at
the domain name or a search engine summary.” Id.; see also 5 McCarthy, Section
25A:44, at 25A-184 (“mere ‘diversion’ is not the same as ‘confusion’ ”).
{¶ 32} The dissent would like us to remand this case for application of the
Sixth Circuit’s multifactor test in the context of initial-interest confusion, but the
Sixth Circuit has found it unnecessary to apply the multifactor test to domain-name
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disputes like this one. Instead, the Sixth Circuit has made clear that the only
important question in a domain-name dispute “is whether there is a likelihood of
confusion between the parties’ goods or services.” (Emphasis in original.)
Taubman Co. v. Webfeats, 319 F.3d 770, 776 (6th Cir.2003).3 Thus, “it is irrelevant
whether customers would be confused as to the origin of the websites, unless there
is confusion as to the origin of the respective products.” Id. Similarly, in another
domain-name dispute decided just this year, rather than apply the multifactor test,
the Sixth Circuit explained “the ‘ultimate question’ in assessing the likelihood of
confusion is ‘whether relevant customers are likely to believe that the products or
services offered by the parties are affiliated in some way.” Dassault Systèmes, SA
v. Childress, 828 Fed.Appx. 229, 250 (6th Cir.2020), quoting Interactive Prods.
Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 695 (6th Cir.2003).
Applying de novo review to the trial court’s denial of a motion for judgment as a
matter of law, the Sixth Circuit found it unnecessary to even reference the eight-
factor test. It simply held that there was no viable claim because the plaintiff failed
to “ ‘explain why, assuming that such initial confusion were to take place, it would
not be instantly dissipated without any harm’ once the consumer clicks the * * *
link and enters the website.” Id., quoting Groeneveld Transport Efficiency, Inc. v.
Lubecore Internatl., Inc., 730 F.3d 494, 519 (6th Cir.2013).
{¶ 33} Thus, a review of the federal caselaw lends further support to the
result we arrive at from a plain reading of Ohio’s Deceptive Trade Practices Act.
Customer confusion is measured by whether a reasonable consumer who has landed
on Wooster Floral’s website is likely to be confused about the source of the goods
3. Because the Sixth Circuit in Webfeats determined that the defendant’s use of his website
ultimately did not implicate the Lanham Act, the dissent shrugs off as dicta the court’s finding that
there was no likelihood of confusion. But the fact that there are two independent reasons for a ruling
does not render one of those reasons dicta, especially when the issue considered was one expressly
before the court and one which the court had reason to decide—rather than merely opine—upon.
See Wright v. Spaulding, 939 F.3d 695, 701-702 (6th Cir.2019).
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offered for sale on the site. There is no reason in this case to remand for the
application of the Sixth Circuit’s multifactor test. That test was developed for a
“different problem—i.e., for analyzing whether two competing brands’ marks are
sufficiently similar to cause customer confusion [emphasis sic],” Multi Time
Machine, Inc. v. Amazon.com, Inc., 804 F.3d 930, 936 (9th Cir.2015), and provides
little assistance in this case.4 Here, the plain terms of the statute are all we need to
resolve the question in front of us.
{¶ 34} Under both federal precedent and the plain terms of the Ohio statute,
the question is whether a consumer landing on Green Thumb’s website is likely to
be confused about the entity that will be fulfilling his order. The answer is clearly
no. A consumer who buys flowers on Green Thumb’s website after initially typing
in woosterfloral.com knows full well that his order is going to be fulfilled by Green
Thumb. Green Thumb’s use of the woosterfloral.com domain name does not
violate Ohio’s Deceptive Trade Practices Act.
III. CONCLUSION
{¶ 35} Wooster Floral & Gifts, L.L.C., has failed to demonstrate that Green
Thumb’s use of the domain name www.woosterfloral.com causes a likelihood of
confusion as to the source of goods sold on the website. We thus affirm the
judgment below.
Judgment affirmed.
O’CONNOR, C.J., and KENNEDY and FISCHER, JJ., concur.
DONNELLY, J., concurs in judgment only.
FRENCH, J., dissents, with an opinion joined by STEWART, J.
4. The dissent finds our reliance on Multi Time Machine to be “misplaced,” since “the case before
us is not a keyword-advertising case—it’s a trade name case.” Dissenting opinion at ¶ 51. That
distinction is immaterial here because “the ultimate test” is the same for both: whether a reasonable
consumer is likely to be confused as to the origin of the goods. Multi Time Machine at 937. That
Multi Time Machine concerned a keyword-advertising dispute does not change the fact that, as in
that case, “[o]ur case can be resolved simply by [an] evaluation of the web page at issue,” id.14
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FRENCH, J., dissenting.
{¶ 36} In this court’s first opportunity to address Ohio’s Deceptive Trade
Practices Act (“DTPA”), specifically R.C. 4165.02, the majority fails to establish a
standard for courts to follow when considering whether a party’s use of a disputed
trade name is likely to cause confusion among consumers about the source of the
goods or services. Relying exclusively on the fact that the trade name “Wooster
Floral & Gifts” has a geographic component, the majority declares that it is “a fairly
weak trade name,” and that there can be no source confusion regarding its use.
Majority opinion at ¶ 19. In my view, we should adopt the factors outlined in
Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648
(6th Cir.1982), to guide the “likelihood of confusion” analysis.
{¶ 37} The majority also rejects the idea that we can measure source
confusion at the point when a consumer types a trade name into a web browser, a
concept that is generally known as initial-interest confusion. I disagree. Federal
courts have recognized initial-interest confusion, and we should recognize it too.
Although I agree with the majority that federal courts have set a high bar for
plaintiffs to prevail on a claim predicated on initial-interest confusion, I am
unwilling to wholly reject the reality that a domain name itself provides source-
identifying information or that consumers may be confused when a competitor uses
another’s trademark or trade name in a domain name. Because the trial court and
the appellate court here failed to recognize that appellant, Wooster Floral & Gifts,
L.L.C., could base its DTPA claim on appellee Green Thumb Floral & Garden
Center, Inc.’s use of Wooster Floral’s trade name as a Uniform Resource Locator5
5. “Uniform Resource Locator” or “URL” is the term used to describe the location of a specific
webpage, such that if a specific URL is entered into an Internet browser, a specific website will
appear. 1-800 Contacts, Inc. v. WhenU.com, Inc., 309 F.Supp.2d 467, 474 (S.D.N.Y.2003) fn. 13,
rev’d on other grounds, 414 F.3d 400 (2d Cir.2005). A “domain name” typically refers to the URL
for the front or home page of a website. Id.15
SUPREME COURT OF OHIO
(“URL”), I would reverse the judgment of the Ninth District Court of Appeals. I
would also remand the matter to the trial court for it to consider whether Wooster
Floral has proven its DTPA claim against Green Thumb. I therefore dissent from
the majority’s judgment.
A. This court should adopt a standard for determining if there is a “likelihood of
confusion” to support a DTPA claim
{¶ 38} In Ohio, a person engages in a deceptive trade practice if in the
course of her business, she “[c]auses likelihood of confusion or misunderstanding
as to the source, sponsorship, approval, or certification of goods or services.” R.C.
4165.02(A)(2). Section 43(a) of the federal Lanham Act, codified at 15 U.S.C.
1125(a)(1), prohibits a person from using a word or name in commerce that is
“likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or commercial activities by
another person,” 15 U.S.C. 1125(a)(1)(A). The federal courts and Ohio’s appellate
courts have recognized that the federal code and state statute are similar in their
proscription of trade practices that cause confusion about the source of goods or
services, and that they should be interpreted similarly. See Worthington Foods, Inc.
v. Kellogg Co., 732 F. Supp. 1417, 1431 (S.D.Ohio 1990) (R.C. 4165.02 is
substantially similar to 15 U.S.C. 1125(a) such that an “analysis appropriate for a
determination of liability under section 43(a) of the Lanham Act is also appropriate
for determining liability under [R.C. 4165.02]”); Yonoco’s Restaurant, Inc. v.
Yonoco, 100 Ohio App.3d 11, 17, 651 N.E.2d 1347 (9th Dist.1994) (R.C. 4165.02
is substantially similar to 15 U.S.C. 1125(a)); Profusion Indus., L.L.C. v. Chem-Tek
Sys., Inc., N.D.Ohio No. 5:16-cv-164, 2016 WL 7178731, *3 (Dec. 9, 2016) (“The
analysis of an unfair competition claim under Ohio’s [DTPA] is the same as for an
unfair competition claim under the Lanham Act—likelihood of consumer
confusion”); Enduring Wellness, L.L.C. v. Roizen, 8th Dist. Cuyahoga No. 108681,
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January Term, 2020
2020-Ohio-3180, ¶ 46 (DTPA is substantially similar to the Lanham Act, and Ohio
courts apply the same analysis that is applicable to claims commenced under
analogous federal law). The focus of the inquiry in a case brought under Ohio’s
DTPA or the federal Lanham Act is whether the use of the trademark or trade name
is “likely to cause confusion among consumers regarding the origin of the goods
offered by the parties.” Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family
Music Ctr., 109 F.3d 275, 280 (6th Cir.1997).
{¶ 39} The federal courts and Ohio’s appellate courts have considered eight
factors to assess the likelihood of consumer confusion when one competitor uses
another competitor’s trade name commercially: (1) the strength of the plaintiff’s
mark, (2) relatedness of the goods, (3) the similarity of the marks, (4) evidence of
actual confusion, (5) the marketing channels used, (6) the likely degree of
purchaser care, (7) the defendant’s intent in selecting the mark, and (8) the
likelihood of expansion of the product lines. See Frisch’s Restaurants, Inc., 670
F.2d at 648; Grubbs v. Sheakley Group, Inc., 807 F.3d 785, 794-795 (6th Cir.2015)
(outlining the eight factors and explaining how each factor is applied); Cesare v.
Work, 36 Ohio App.3d 26, 30, 520 N.E.2d 586 (9th Dist.1987), citing Frisch’s
Restaurants, Inc. at 648; Leventhal & Assocs., Inc. v. Thomson Cent. Ohio, 128
Ohio App.3d 188, 197, 714 N.E.2d 418 (10th Dist.1998), citing Cesare at 30 and
Frisch’s Restaurants, Inc. As the federal courts have explained, a plaintiff need
not show that all, or even most, of the factors are present in any particular case to
prevail on its deceptive-trade-practice claim. Wynn Oil Co. v. Thomas, 839 F.2d
1183, 1186 (6th Cir.1988); see also Daddy’s Junky Music Stores, Inc. at 280 (the
factors are interrelated, and not all factors may be helpful in a given case). The
factors simply provide a guide for assessing the likelihood of confusion. Wynn Oil
Co. at 1186.
{¶ 40} Although we implicitly recognized many of the eight factors before
the General Assembly enacted Ohio’s DTPA, we have not had the opportunity to
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SUPREME COURT OF OHIO
adopt the factors or any other standard for assessing the likelihood of consumer
confusion for claims brought under Ohio’s DTPA. See Natl. City Bank v. Natl. City
Window Cleaning Co., 174 Ohio St. 510, 190 N.E.2d 437 (1963) (considering the
strength of the business, the distinctiveness of the name, whether the businesses are
competitors, and the similarity of the marks in analyzing a common-law trade-
name-infringement claim).
{¶ 41} Today, we have the opportunity to adopt a standard for lower courts
to apply to DTPA claims, but the majority squanders the opportunity away. The
majority appears to consider the strength of Wooster Floral’s trade name,
considering only its geographic description and whether there is evidence of actual
confusion in arriving at its conclusion that Wooster Floral’s DTPA claim fails
because Wooster Floral has not shown a sufficient likelihood of confusion. But
because the majority fails to identify any factors that lower courts may use in
analyzing whether the commercial use of another’s trade name causes a likelihood
of confusion, it leaves unclear how Ohio’s courts should analyze these issues in
future cases that involve different facts or a stronger trade name. And the majority’s
reliance on the plain language of the statute—that is, R.C. 4165.02(A)(2)’s
reference to “goods and services”—adds nothing to the analysis. Although the
ultimate consideration is always whether there is a likelihood of confusion
regarding the source of goods or services—no one disputes that—the question the
majority fails to answer is: How does a court determine whether there is a likelihood
of confusion? In my view, we should answer that question. I would formally adopt
the eight factors outlined in Frisch’s Restaurants, Inc. at 648 for courts to use in
analyzing claims brought under Ohio’s DTPA alleging that a defendant’s use of a
plaintiff’s trade name causes a likelihood of confusion as to the source of the
defendant’s goods or services.
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January Term, 2020
B. A deceptive trade-practice claim may be predicated on initial-interest confusion
{¶ 42} Wooster Floral argues that the deceptive act here is the use of the
Wooster Floral trade name as a domain name to redirect prospective customers to
its direct competitor’s website. It argues that the deceptive act is already complete
by the time the prospective customer arrives at Green Thumb’s website, and it is
immaterial that Green Thumb’s website does not use its trade name. But the
majority rejects this initial-interest-confusion argument and concludes that because
Green Thumb’s website does not reference Wooster Floral, consumers
categorically could not be confused about which business would be filling an order
when they type Wooster Floral’s trade name as a URL and are automatically
redirected to Green Thumb’s website. Although the majority acknowledges that a
“trade name is descriptive of the identity of the owner of the business,” majority
opinion at ¶ 19, fn. 1, it inexplicably refuses to apply that principle to a trade name
that is used in a URL. Rather, the majority draws an arbitrary barrier separating
the connotation of the words used in a URL from the source of the goods or services
contained on the website to which the URL leads. In doing so, the majority
insulates from liability a competitor who misappropriates another’s trade name in
its URL as long as it does not use the trade name on its website. Under the
majority’s rationale, there is no value to the words used in a domain name or URL;
only the content on the resulting website matters.
{¶ 43} The majority’s wholesale refusal to recognize initial-interest
confusion would therefore foreclose a similar action even if it involved a strong
trade name “like Kodak or John Deere that a customer strongly and immediately
associates with a particular brand,” majority opinion at ¶ 19, or if the website
domain consisted “solely of a trademarked name,” majority opinion at ¶ 31. I
would recognize that a URL or domain name provides source-identifying
information and that a defendant who uses a competitor’s trade name in its URL
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may cause initial-interest confusion about the source of the goods or services that
the defendant is offering.
{¶ 44} Initial-interest confusion “occurs when a consumer is lured to a
product by its similarity to a known mark, even though the consumer realizes the
true identity and origin of the product before consummating a purchase.” Eli Lilly
& Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir.2000); see also
Brookfield Communications, Inc. v. W. Coast Entertainment Corp., 174 F.3d 1036,
1062 (9th Cir.1999), quoting Dr. Seuss Ents., L.P. v. Penguin Books U.S.A., Inc.,
109 F.3d 1394, 1405 (9th Cir.1997) (“[T]he use of another’s trademark in a manner
calculated ‘to capture initial consumer attention, even though no actual sale is
finally completed as a result of the confusion, may be still an infringement’ ”).
Federal courts have recognized that initial-interest confusion is actionable under
the Lanham Act, including claims brought under Section 43(a) of that act, 15 U.S.C.
1125(a), and claims alleging initial-interest confusion when a trademark is used as
part of a URL. See Checkpoint Sys., Inc. v. Check Point Software Technologies,
Inc., 269 F.3d 270, 292 (3d Cir.2001) (in a case brought under Section 43(a) of the
Lanham Act, the Third Circuit joined the Second, Seventh, and Ninth Circuits in
recognizing initial-interest confusion as actionable); Eli Lilly at 464; PACCAR, Inc.
v. TeleScan Technologies, L.L.C., 319 F.3d 243, 250 (6th Cir.2003), abrogated on
other grounds by KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543
U.S. 111, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004); Ohio State Univ. v. Thomas, 738
F.Supp.2d 743, 755 (S.D.Ohio 2010) (in a case alleging trademark infringement
and unfair competition under the Lanham Act, the court recognized that the
defendant’s use of a domain name containing the plaintiff’s trademark had the
potential to misdirect consumers as they search for websites associated with the
plaintiff). Thus, although the majority notes that the Fourth Circuit does not appear
to recognize initial-interest confusion, it can hardly be said that federal circuits have
“largely” found the theory inapplicable, majority opinion at ¶ 28. The theory is
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January Term, 2020
neither novel nor controversial, and we should not be so quick to dismiss its
applicability.
{¶ 45} In rejecting the idea of initial-interest confusion, the majority fails to
appreciate that a domain name contains source-identifying information. See
PACCAR, Inc. at 250 (a significant purpose of a domain name is to identify the
entity that owns the website); Grubbs, 807 F.3d at 794 (domain names
communicate information about the source or sponsor of the website). “When a
firm uses a competitor’s trademark in the domain name of its website, users are
likely to be confused as to its source or sponsorship.” Brookfield Communications,
Inc. at 1066. Even if there is ultimately no source confusion, the initial-interest
confusion diverts anyone looking for one website to the other site. Id. at 1062.
{¶ 46} For those reasons, I would allow a DTPA claim to be predicated on
the initial-interest confusion that may occur when a defendant uses a competitor’s
trade name in a URL that directs consumers to the defendant’s website. I would
apply the eight factors outlined in Frisch’s Restaurants, Inc., 670 F.2d at 648, to
those claims to determine whether the domain name itself, not just the website to
which consumers are ultimately directed, causes a likelihood of confusion with
respect to the source of the defendant’s goods or services. In the context before us,
the three most important factors are the similarity of the marks, the relatedness of
the goods or services, and the use of the Internet as a marketing channel by both
entities. See id.; PACCAR, Inc. at 254-255.
{¶ 47} To support its contrary conclusion, the majority claims that the Sixth
Circuit has found it unnecessary to apply this multifactor test in cases involving
domain names. But the cases the majority cites to support that conclusion are
unavailing. In Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir.2003), the Sixth
Circuit concluded that the parties’ dispute did not implicate the Lanham Act
because the defendant was not using a website that shared a name with the
plaintiff’s shopping mall and therefore did not constitute commercial speech. Id. at
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SUPREME COURT OF OHIO
775-776. Nonetheless, the court said in dicta that there was also no likelihood of
confusion in the case because the defendant had a conspicuous disclaimer on its
noncommercial website indicating that the website was not the mall’s official
website and included a hyperlink that redirected users to the plaintiff’s website. Id.
at 777. That can hardly be classified as a rejection of a multifactored-analysis
approach to domain-name cases.
{¶ 48} The majority then cites Dassault Systèmes, SA v. Childress, 828
Fed.Appx. 229, 250 (6th Cir.2020), and represents that the Sixth Circuit did not
apply the Frisch’s Restaurants, Inc. factors there either. But the majority
completely ignores that the district court in that matter did apply the Frisch’s
Restaurants, Inc. factors when it instructed the jury on how to analyze whether the
defendant’s use of the plaintiff’s trademark caused a likelihood of confusion. See
Dassault Systèmes, SA v. Childress, E.D.Mich. No.2:09-cv-10534-MOB-MJH,
2017 WL 6804231, *4 (July 14, 2017). The jury subsequently returned a verdict in
favor of the defendant on the plaintiff’s trademark-infringement claim. The
plaintiff then filed a motion for judgment as a matter of law, arguing that the jury’s
decision was against the manifest weight of the evidence, and the district court
denied that motion. On appeal, the Sixth Circuit needed to decide only whether the
record supported the jury’s finding that the defendant’s website was unlikely to
cause confusion in order to affirm the district court’s decision on that motion. The
Sixth Circuit’s determination that the record supported the jury’s verdict—which
the jury based on an application of the Frisch’s Restaurants, Inc. factors—does not
support the conclusion that the Sixth Circuit does not follow the eight-factor
analysis in domain-name cases.
{¶ 49} The majority’s reliance on these cases also displays a
misunderstanding about the deceptive use Wooster Floral alleges here. The
majority quotes Childress for the proposition that a consumer’s initial-interest
confusion will dissipate as soon as she goes to Green Thumb’s website, which does
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not incorporate Wooster Floral’s trade name. But Childress focused on the
potential for a defendant’s website to show up following a consumer’s Internet
search for a particular trade name using a search engine. The defendant in Childress
used the plaintiff’s trade name only as part of its domain name. . Initial-interest
confusion is “not as great” when it is predicated on results that are returned through
an Internet search engine, as opposed to when the trade name itself is the domain
name that can be typed in as a URL. See Brookfield Communications, Inc., 174
F.3d at 1062; Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 945 (9th
Cir.2002), fn. 10 (discussing the role of search engines in the initial-interest
confusion context and finding it “largely irrelevant what results when a given term
is input into a search engine”).
{¶ 50} Similarly, the majority’s reliance on language in Multi Time
Machine, Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir.2015), stating that the
eight-factor test was developed for a “ ‘different problem—i.e., for analyzing
whether two competing brands’ marks are sufficiently similar to cause customer
confusion’ ” is misplaced. (Emphasis in Multi Time Machine, Inc.) Majority
opinion at ¶ 33, quoting Multi Time Machine, Inc. at 936. The Ninth Circuit in
Multi Time Machine, Inc. reaffirmed that the eight-factor test applies to analyzing
the likelihood of customer confusion. Id. at 936. When the court stated that those
factors were developed to analyze whether competitor’s marks caused customer
confusion, it was talking about trademarks, which are treated as functionally
equivalent to trade names. Younker v. Nationwide Mut. Ins. Co., 175 Ohio St. 1, 6,
191 N.E.2d 145 (1963) (recognizing that the basic principles governing trade names
and trademarks are the same). The issue in Multi Time Machine, Inc. was whether
the eight-factor test applied to a dispute involving competing brands. The plaintiff
alleged that the defendant was infringing upon its trademark because when
customers typed the plaintiff’s trademark into the defendant’s search bar, the results
would include products made by competing brands. But the defendant was not
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SUPREME COURT OF OHIO
using the plaintiff’s trademark at all. In rejecting the application of the eight-factor
test in that context, the Ninth Circuit explained that “the confusion [was] not caused
by the design of the competitor’s mark, but by the design of the web page that [was]
displaying the competing mark and offering the competing products for sale.” Id.
at 937. In the “ ‘keyword advertising context,’ ” the likelihood-of-confusion
analysis turns on what the consumer saw on the screen and what she reasonably
believed, given the context of the search. Id., quoting Network Automation, Inc. v.
Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1153 (9th Cir.2011).
{¶ 51} The case before us is not a keyword-advertising case—it’s a trade-
name case. Green Thumb is using Wooster Floral’s trade name as a domain name
to redirect potential customers to Green Thumb’s website. This case falls squarely
within the type of dispute that the court in Multi Time Machine, Inc. recognized is
subject to the Frisch’s Restaurants, Inc., 670 F.2d at 648, eight-factor test to assess
whether there is a likelihood of confusion about the source of the goods or services.
See also Interstellar Starship Servs., Ltd., 304 F.3d at 945; Ohio State Univ., 738
F.Supp.2d at 745; Lahoti v. Vericheck, Inc., 636 F.3d 501, 507-509 (9th Cir.2011)
(applying the eight-factor test to a domain-name dispute); A.B.C. Carpet Co., Inc.
v. Naeini, E.D.N.Y. No. 00-CV-4884-FB, 2002 WL 100604, *3 (Jan. 22, 2002);
Icon Health & Fitness, Inc. v. Kelley, W.D.Texas No. 1:17-CV-356-LY, 2017 WL
6610085, *2 (Dec. 27, 2017) (applying the Fifth Circuit’s similar eight-factor
“digits of confusion” analysis to a domain-name dispute); TracFone Wireless, Inc.
v. Clear Choice Connections, Inc., 102 F.Supp.3d 1321, 1327-1328 (S.D.Fla.2015)
(applying the Eleventh Circuit’s similar likelihood-of-confusion factors to a
domain-name dispute). Plainly, the foundation the majority uses to support its
rejection of the eight-factor test from Frisch’s Restaurants, Inc. is nothing more
than a house of cards, easily toppled.
{¶ 52} Neither the trial court nor the court of appeals considered whether
Green Thumb’s use of Wooster Floral’s trade name in a URL caused initial-interest
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January Term, 2020
confusion. And neither court analyzed the likelihood of confusion under the factors
set out in Frisch’s Restaurant, Inc. Consequently, I would reverse the judgment of
the court of appeals and remand the case to the trial court with an order that the
court apply the factors in Frisch’s Restaurant, Inc. to determine whether Green
Thumb violated Ohio’s DTPA when it used Wooster Floral’s protected trade name
in a URL to redirect users to Green Thumb’s website.
STEWART, J., concurs in the foregoing opinion.
_________________
Tucker Ellis, L.L.P., Susan M. Audey, and Melissa Z. Kelly, for appellant.
Reynolds Law Office and Craig R. Reynolds, for appellee.
_________________
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