[Cite as Wooster Floral & Gifts, L.L.C. v. Green Thumb Floral & Garden Ctr., Inc., 2019-Ohio-63.]


STATE OF OHIO                    )                         IN THE COURT OF APPEALS
                                 )ss:                      NINTH JUDICIAL DISTRICT
COUNTY OF WAYNE                  )

WOOSTER FLORAL & GIFTS, LLC                                C.A. No.         17AP0026

        Appellant

        v.                                                 APPEAL FROM JUDGMENT
                                                           ENTERED IN THE
GREEN THUMB FLORAL & GARDEN                                COURT OF COMMON PLEAS
CENTER, INC.                                               COUNTY OF WAYNE, OHIO
                                                           CASE No.   2016 CVC-H 000293
        Appellee

                                 DECISION AND JOURNAL ENTRY

Dated: January 14, 2019



        HENSAL, Judge.

        {¶1}    Wooster Floral & Gifts, LLC appeals from the judgment of the Wayne County

Court of Common Pleas. This Court affirms.

                                                      I.

        {¶2}    This appeal involves two competing floral shops in Wooster, Ohio, and their

dispute over the domain name www.woosterfloral.com. We will begin our review with a brief

recitation of the pertinent facts.

        {¶3}    Kimberly Gantz owned and operated Wooster Floral, LLC beginning in the early

2000s. In late 2014, she decided to close her business. After announcing the store’s closure, the

store’s manager, Katrina Heimberger, expressed interest in buying it from Ms. Gantz. The

parties executed a contract of sale in January 2015. The contract indicated that Ms. Heimberger

was “not purchasing the business,” but rather certain assets, including the use of the name

Wooster Floral. Thereafter, Ms. Heimberger filed and recorded articles of organization for
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Wooster Floral & Gifts, LLC with the Ohio Secretary of State, as well as an assignment of the

trade name “Wooster Floral LLC” to Ms. Heimberger, which Ms. Gantz had previously

registered. Ms. Heimberger operated Wooster Floral & Gifts, LLC out of the same location that

Wooster Floral, LLC had operated until she moved to a new location in mid-February.

According to her, the store operated continuously during the transition. Ms. Gantz dissolved

Wooster Floral, LLC in December 2015.

        {¶4}    There is no dispute that, while Ms. Gantz had previously owned the domain name

www.woosterfloral.com, she did not own it at the time of the asset sale because she had let the

registration lapse. Instead, Claudia Grimes – owner of Green Thumb Floral & Garden Center,

Inc. (“Green Thumb”) – owned the domain name at the time of the sale, which Ms. Grimes used

to direct customers to Green Thumb’s website: www.greenthumbfloralandgifts.com.            Ms.

Heimberger testified that she was aware that Green Thumb owned the domain name at the time

of the asset sale.

        {¶5}    In June 2016, Wooster Floral & Gifts, LLC sued Green Thumb. In its complaint,

Wooster Floral & Gifts, LLC asserted that: (1) Green Thumb’s use of the trade name Wooster

Floral in its advertising (i.e., via its use of www.woosterfloral.com) violated Revised Code

Section 1329.65; (2) Wooster Floral & Gifts, LLC was entitled to an injunction prohibiting

Green Thumb from using its trade name and requiring Green Thumb to surrender the domain

name under Section 1329.66; (3) Green Thumb’s use of the trade name in its advertising violated

Section 4165.02(A)(2) of Ohio’s Deceptive Trade Practices Act; (4) Wooster Floral & Gifts,

LLC was entitled to an injunction prohibiting Green Thumb from using its trade name and

requiring Green Thumb to surrender the domain name under Section 4165.03(A)(1); (5) Wooster

Floral & Gifts, LLC was entitled to damages for lost revenue under Section 4165.03(A)(2); and
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(6) Wooster Floral & Gifts, LLC was entitled to reasonable attorney’s fees under Section

4165.03(B).

       {¶6}    The matter proceeded to a bench trial, and the trial court found in favor of Green

Thumb. In doing so, the trial court held that Wooster Floral & Gifts, LLC’s claims under

Chapter 1329 failed because it did not have a registered trademark. Wooster Floral & Gifts, LLC

has not challenged the trial court’s ruling in that regard on appeal. Regarding Wooster Floral &

Gifts, LLC’s claims under Ohio’s Deceptive Trade Practices Act, the trial court held that Green

Thumb’s advertising did not create a likelihood of confusion or misunderstanding as to the

source of goods or services. Wooster Floral & Gifts, LLC challenges this holding on appeal,

raising one assignment of error for our review.

                                                  II.

                                  ASSIGNMENT OF ERROR

       THE TRIAL COURT ERRED WHEN IT GRANTED JUDGMENT IN FAVOR
       OF DEFENDANT-APPELLEE GREEN THUMB FLORAL & GARDEN
       CENTER, INC. ON PLAINTIFF-APPELLANT WOOSTER FLORAL & GIFTS,
       LLC’S CLAIMS FOR INJUNCTIVE RELIEF AND ATTORNEY’S FEES
       UNDER OHIO’S DECEPTIVE TRADE PRACTICES ACT (DTPA), R.C.
       4165.01, ET SEQ.

       {¶7}    In its assignment of error, Wooster Floral & Gifts, LLC argues that the trial court

erred when it granted judgment in favor of Green Thumb on its claims for injunctive relief and

attorney’s fees under Ohio’s Deceptive Trade Practices Act. We disagree.

       {¶8}    The standard of proof necessary to prevail in an action for injunctive relief under

R.C. 4165.03 is a showing of “likelihood of confusion” by clear and convincing evidence.

Cesare v. Work, 36 Ohio App.3d 26, 29 (9th Dist.1987), citing Frisch’s Restaurants, Inc. v.

Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 647 (6th Cir.1982); Yocono’s Restaurant v.

Yocono, 100 Ohio App.3d 11, 18 (9th Dist.1994).          The trial court may award reasonable
                                                4


attorney’s fees to a prevailing party if it finds that the defendant “willfully engaged in a trade

practice * * * knowing it to be deceptive.” R.C. 4165.03(B).

       {¶9}     The basis of Wooster Floral & Gifts, LLC’s claim under the Deceptive Trade

Practices Act is that Green Thumb deceptively used the trade name Wooster Floral by using the

domain name www.woosterfloral.com to direct customers to Green Thumb’s website, creating a

likelihood of confusion as to the source of the goods available on the website. Green Thumb,

however, argues that Wooster Floral & Gifts, LLC cannot prevail because it did not exist at the

time Green Thumb acquired the domain name.

       {¶10} We begin by noting that “[t]he rights in * * * trade names * * * are acquired by

actual use and not by registration. Such rights belong to the one who first actually adopts and

uses the name or mark in connection with his business.” Younker v. Nationwide Mut. Ins. Co.,

175 Ohio St. 1, 6 (1963). “The registration statutes merely implement the common-law rights

and create certain procedural advantages.” Id. at 6-7. According to Ms. Gantz, she began using

the name Wooster Floral in 2000 and registered Wooster Floral, LLC at that time. In January

2015, Ms. Heimberger purchased “the personal assets, inventory and use of the name * * *

Wooster Floral” from her. The following month, Ms. Heimberger filed articles of organization

to create Wooster Floral & Gifts, LLC. She also filed an assignment of the trade name “Wooster

Floral LLC” to herself. It does not appear to be disputed that Ms. Heimberger transferred the

assets she had purchased from Ms. Gantz to the new company. There is also no evidence that

Ms. Heimberger intended to abandon the “Wooster Floral” trade name during the time between

when she purchased the name and organized Wooster Floral & Gifts, LLC. See Cloverleaf

Restaurants, Inc. v. Lenihan, 79 Ohio App. 493, 495, 499 (8th Dist.1946) (finding a valid

transfer of the right to use a trade name when plaintiff corporation “purchased the furniture,
                                                5


fixtures, good will and right to the use of the name ‘Pickwick’” from original corporation).   We,

therefore, do not agree with Green Thumb that Wooster Floral & Gifts, LLC may not seek to

enjoin others from using the trade name “Wooster Floral.”

       {¶11} Accordingly, the issue is whether Green Thumb’s use of the domain name

“[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). Wooster Floral & Gifts, LLC argues

that Green Thumb’s use of the domain name is likely to cause confusion as to the source of the

flowers ordered from the site. It argues that consumers who enter a specific business’s name into

a web browser expect to be directed to that business’s website. It, therefore, argues that the

analysis must focus on the point in time when a consumer types in the www.woosterfloral.com

domain name, not at what a consumer sees after arriving at the website. It compares Green

Thumb’s use of its trade name in a domain name as the 21st century equivalent of placing a

deceivingly similar newspaper advertisement or purposely providing an incorrect telephone

number, citing Patio Enclosures, Inc. v. Borchert, 8th Dist. Cuyahoga No. 40592, 1980 WL

354611 (May 15, 1980) and Kenneth J. Majcen & Assocs. v. Phoenix Assocs., Inc., 8th Dist.

Cuyahoga No. 76454, 2001 WL 60038 (Jan. 18, 2001). It also argues that it does not have to

demonstrate actual confusion so long as there is sufficient evidence of a likelihood of confusion.

Cesare, 36 Ohio App.3d 26, at 29.

       {¶12} The question under Section 4165.02(A)(2) is whether a customer who purchases

goods while visiting www.woosterfloral.com is likely to be confused about or misunderstand the

source of those goods. The trial court, therefore, did not err when it examined the website itself

to determine whether a customer would likely be confused or have a misunderstanding. Our

review of the evidence submitted by the parties confirms the trial court’s finding that “[t]he
                                                 6


home page is clearly identified as ‘Green Thumb Floral’” and that there is no use of the trade

name “Wooster Floral” within the website.      Wooster Floral & Gifts, LLC has not directed this

Court to anything within the website that suggests that a consumer would likely be confused

about which company is providing the goods for sale.

       {¶13} Upon review of the record, we conclude that Wooster Floral & Gifts, LLC failed

to demonstrate by clear and convincing evidence that Green Thumb’s use of the domain name

www.woosterfloral.com will cause a likelihood of confusion or misunderstanding as to the

source of goods sold on the website. In light of Wooster Floral & Gifts, LLC’s failure to

establish that Green Thumb engaged in a deceptive trade practice, we also conclude that the trial

court did not err when it declined to grant Wooster Floral & Gifts, LLC’s request for attorney’s

fees. Wooster Floral & Gifts, LLC’s assignment of error is overruled.

                                                III.

       {¶14} Wooster Floral & Gifts, LLC’s assignment of error is overruled. The judgment of

the Wayne County Court of Common Pleas is affirmed.

                                                                             Judgment affirmed.




       There were reasonable grounds for this appeal.

       We order that a special mandate issue out of this Court, directing the Court of Common

Pleas, County of Wayne, State of Ohio, to carry this judgment into execution. A certified copy

of this journal entry shall constitute the mandate, pursuant to App.R. 27.

       Immediately upon the filing hereof, this document shall constitute the journal entry of

judgment, and it shall be file stamped by the Clerk of the Court of Appeals at which time the

period for review shall begin to run. App.R. 22(C). The Clerk of the Court of Appeals is
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instructed to mail a notice of entry of this judgment to the parties and to make a notation of the

mailing in the docket, pursuant to App.R. 30.

        Costs taxed to Appellant.




                                                    JENNIFER HENSAL
                                                    FOR THE COURT




TEODOSIO, P. J.
CONCURS IN JUDGMENT ONLY.

CALLAHAN, J.
DISSENTING.

        {¶15} I respectfully dissent from the majority’s resolution of this matter and would

reverse the decision of the trial court.

        {¶16} “The Sixth Circuit has considered eight factors relevant to the likelihood of

confusion: ‘1. strength of the plaintiff’s mark; 2. relatedness of the goods; 3. similarity of the

marks; 4. evidence of actual confusion; 5. marketing channels used; 6. likely degree of purchaser

care; 7. defendant’s intent in selecting the mark; [and] 8. likelihood of expansion of the product

lines.’” (Internal quotation marks sic.) Cesare v. Work, 36 Ohio App.3d 26, 30 (9th Dist.1987),

quoting Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th

Cir.1982).

        {¶17} Upon consideration of these factors and the record in this case, I would conclude

that Wooster Floral & Gifts has shown by clear and convincing evidence that Green Thumb’s

use of the internet domain name “woosterfloral.com” is an infringement on the trade name

Wooster Floral that has a likelihood of causing confusion as to the source of the goods or
                                                8


services. I would reverse the decision of the trial court and remand the matter for the trial court

to enter a judgment in favor of Wooster Floral & Gifts enjoining Green Thumb from using the

woosterfloral.com domain name and to consider Wooster Floral & Gifts’ claims for money

damages for lost revenue and attorney’s fees.


APPEARANCES:

SUSAN M. AUDEY and MELISSA Z. KELLY, Attorneys at Law, for Appellant.

CRAIG R. REYNOLDS, Attorney at Law, for Appellee.
