By Robert B. Barnett Jr., J.D.
A consumer who types in "www.woosterfloral.com" and is taken to the Green Thumb Floral website might be confused, but that confusion does not constitute a deceptive trade practice.
In a deceptive trade practices suit by Wooster Floral & Gifts, Green Thumb Floral’s ownership of the domain name www.woosterfloral.com did not violate Ohio’s Deceptive Trade Practices Act because no evidence of consumer confusion existed given the Green Thumb website clearly indicated that it was owned by Green Thumb Floral, the Ohio Supreme Court has ruled. Consumer confusion is measured at the time the user arrives at the website rather than at the time the user types the domain name. A dissenting opinion called for the court to adopt the initial-interest-confusion doctrine and the eight-factor test used by the Sixth Circuit to analyze Lanham Act claims (Wooster Floral & Gifts, LLC v. Green Thumb Floral & Garden Center, Inc., December 15, 2020, DeWine, R.).
Background. Wooster Floral was a flower and gift shop operating in Wooster, Ohio, from 2000 to 2015. Wooster owned a few domain names, including www.woosterfloral.com. In late 2014, the owner decided to close the business. The store manager, wishing to keep the store open, bought certain assets and inventory, including the legal name, for $1. The transaction did not include the domain name www.woosterfloral.com.
Green Thumb Floral & Garden Center is a direct competitor operating in Wooster. When the domain name www.woosterfloral.com became available in early 2015, Green Thumb purchased it. After the purchase, Green Thumb owned the domain names woosterfloral.com, woosterflowers.com, and woosterflorist.com, all of which directed the user to www.greenthumbfloralandgifts.com. Efforts by Wooster Floral’s new owner to buy back the domain name failed.
Wooster Floral sued Green Thumb, alleging both trademark infringement and a violation of the Deceptive Trade Practices Act. At trial, the only evidence of consumer confusion was a bad review by a consumer who thought that he or she had bought from Wooster Floral when actually Green Thumb had filled the order. The evidence also revealed, however, that the consumer had arrived at the website other than by using the woosterfloral.com domain name. The trial court ruled for Green Thumb, rejecting the trademark infringement claim in the absence of a registered trademark and rejecting the deceptive practices claim in the absence of any likelihood of confusion. Wooster Floral appealed the deceptive practices claim only. The Ohio state appellate court affirmed, citing an absence of likely confusion. Wooster Floral then appealed that decision to the Ohio Supreme Court.
Likelihood of confusion. Wooster Floral argued that consumer confusion existed because consumers who typed "www.woosterfloral.com" into the browser expecting to be taken to the Wooster Floral website would be confused when they were instead taken to the Green Thumb website. Acknowledging that such consumers could be confused, the Ohio Supreme Court said, however, that a plain reading of the statute required that the confusion be "of goods or services." The court interpreted this to mean that the confusion, under these facts, must result from the consumer’s interaction with the Green Thumb website. The Green Thumb website "clearly demonstrates Green Thumb’s name, logo, and address and makes no mention of the trade name ‘Wooster Floral’ within the website." Any reasonable user, the court concluded, would know that Green Thumb was providing the goods or services on the website. If the user did not want to buy from Green Thumb, he or she need only hit the Back button to escape the site.
In addition, the court said, any likelihood of confusion was "further mitigated" by the fact that Wooster Floral & Gifts was, at most, a fairly weak trade name. It was entirely possible that a user could type in "woosterfloral" looking for a generic florist in Wooster. This would be true in a way that it would not true for a consumer who typed in, for example, "nike," expecting just any recreational footwear. As a result, the court agreed with the appellate court that consumer confusion was unlikely to result.
Lanham Act claims. To support its appeal, Wooster Floral largely relied on federal cases interpreting the Lanham Act, which have sometimes allowed claims similar to the one Wooster Floral asserted. The court noted, however, that the Lanham Act has a specific cybersquatting provision dealing with bad faith uses of domain names that Ohio does not have. Wooster Floral also cited another Lanham Act provision, Section 43(a), that it argued was most similar to the Ohio law. The court noted, however, that Section 43(a) includes a prohibition on the use of any "word, term [or] name," a provision that the Ohio does not include. The court also rejected Wooster Floral’s effort to have the court adopt the initial-interest-confusion doctrine, which the majority described as "somewhat controversial," an opinion not shared by the dissent. It also rejected Wooster Floral’s request that the Court adopt an eight-factor test used by the Sixth Circuit in Lanham Act cases, characterizing the initial-interest-confusion doctrine as inapplicable in cases where, as here, the initial confusion dissipated upon seeing the website.
Dissent. Two judges dissented, opining that the court should have remanded the case and ordered the lower court to apply the Sixth Circuit’s eight-factor test to measure consumer confusion (Frisch’s Restaurant, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982)). Speaking of the initial-interest-confusion doctrine, the dissent said "we should recognize it too." The dissent also noted that the eight-factor test was especially appropriate in cases where the words typed into the browser were the tradename rather than, say, an advertising keyword. They would have reversed and remanded.
The majority of the court, therefore, affirmed the lower court’s ruling.
This case is Opinion No. 2020-Ohio-5614.
Attorneys: Susan M. Audey (Tucker Ellis, LLP) for Wooster Floral & Gifts, L.L.C. Craig R. Reynolds (Reynolds Law Office) for Green Thumb Floral & Garden Center, Inc.
Companies: Wooster Floral & Gifts, L.L.C.; Green Thumb Floral & Garden Center, Inc.
MainStory: TopStory TechnologyInternet Trademark OhioNews
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