DECISION

 

HAT HOLDINGS LLC v. Micah Githens / WebWit LLC

Claim Number: FA2503002145207

 

PARTIES

Complainant is HAT HOLDINGS LLC ("Complainant"), represented by Bradlee R. Frazer of HAWLEY TROXELL ENNIS & HAWLEY LLP, Idaho, USA. Respondent is Micah Githens / WebWit LLC ("Respondent"), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <builderscapital.loan>, registered with Porkbun LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Gerald M. Levine as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 14, 2025; Forum received payment on March 14, 2025.

 

On March 17, 2025, Porkbun LLC confirmed by e-mail to Forum that the <builderscapital.loan> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On March 18, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@builderscapital.loan. Also on March 18, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on March 27, 2025.

 

On March 28, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Gerald M. Levine as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS 

A. Complainant

The Complainant contends that <builderscapital.loan> the disputed domain name is confusingly similar to the BUILDERS CAPITAL Mark in which Complainant has superior rights for several reasons. First, the dominant and distinctive portion of the <builderscapital.loan> Domain Name is BUILDERSCAPITAL, which is identical to the BUILDERS CAPITAL Mark. Second, the TLD for <builderscapital.loan>, i.e., ".LOAN," conveys the services that are offered under the BUILDERS CAPITAL Mark. These phonetic, visual, and conceptual similarities create a strong likelihood that consumers will misperceive the <builderscapital.loan> Domain Name as related to or derived from the BUILDERS CAPITAL Mark, especially when encountered in similar contexts.

Respondent is using an identical and confusingly similar domain name to redirect internet users to its webpage for commercial gain, capitalizing on the Complainant's long-standing use of the BUILDERS CAPITAL Mark and its goodwill.

Upon information and belief, Respondent registered and is using the Domain Name primarily to profit from and exploit Complainant's BUILDERS CAPITAL Mark and to misdirect internet users to its own website.

 

B. Respondent

Respondent makes the following contentions:

1.       Its branding is explicitly "BuildersCapital.Loan", which is a single word with no spaces and includes the ".Loan" TLD as part of its identity. It continues that this differs from the Complainant's branding of "BUILDERS CAPITAL®" (which contains a space) and does not include any domain extension as part of its branding.

 

2.       The term "Builders Capital" is descriptive and commonly used in the construction financing industry. The Complainant does not have exclusive rights to these generic words in all contexts.

 

3.       The Addition of ".Loan" Creates a Clear Distinction: The Complainant operates under <builderscapital.com>, while Respondent operates under <builderscapital.loan>, a TLD-specific distinction that differentiates the branding and online presence.

 

LACK OF CERTIFICATION

The Policy requires the parties to certify that the "information contained in [their pleadings] is to the best of [their] knowledge complete and accurate." The Respondent has not signed the response (see Rule 5(c)(xiii). The Panel has taken this into account in assessing the Respondent's credibility and the factual allegations in the Response. 

FINDINGS

1.       The second level domain "builderscapital" is identical to the registered mark BUILDERS CAPITAL in which Complainant has a right;

2.       The Respondent lacks rights or legitimate interests in <builderscapital.loan>; and

3.       The Respondent registered and is using <builderscapital.loan> in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7.

 

Here, The Complainant has demonstrated that it owns a trademark issued by the USPTO Registration No. 5,558,981, dated September 11, 2018 for the term BUILDERS CAPITAL. Having established that element of the Policy the next question is whether the disputed domain name is identical or confusingly similar to Complainant's mark.

At the threshold it is necessary only to consider "whether a domain name is similar enough in light of the purpose of the Policy to justify moving on to the other elements of a claim for cancellation or transfer of a domain name." Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, D2000-1415 (WIPO Jan. 23, 2001) (the Panel also notes that "numerous prior panels have held [the purposes of the Policy are satisfied] when a domain name wholly incorporates a complainant's registered mark"). Similarly, Magnum Piering, Inc. v The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 21, 2001).

The Panel finds that on a side-by-side comparison of BUILDERS CAPITAL and <builderscapital.loan> the second level of the disputed domain name is identical to the Complainant's trademark.

Since Respondent denies that <builderscapital.loan> is either identical or confusingly similar to Complainant's mark the Panel finds it necessary to explain why this is incorrect. The Respondent argues that because "'BuildersCapital.Loan" is a single word with no spaces and includes the ".Loan" TLD as part of its identity" It contends that "this differs from the Complainant's branding of 'BUILDERS CAPITAL®' (which contains a space) and does not include any domain extension as part of its branding."

While punctuation and spaces may be relevant under the second and third elements, they are not considered under Policy ¶ 4(a)(i). See Target Brands, Inc. v. Alex Harrison, FA 2142893 (Forum Mar. 25, 2025) (holding that "[t]hese alterations [omitting the spaces, substituting "and" for the ampersand, and adding the article "the" and the ".com" top-level domain] do not substantially diminish the similarity between the domain name and Complainant's mark").

Although in certain circumstances top level domains are read together, such as <tes.co> for example, that does not extend to the situation in this case. Panelists generally disregard top-level suffixes as functional necessities; thus, the top-level extension is irrelevant in determining the issue under the first requirement of the Policy, but even if it were a determining factor the addition of dot loan to "Builders Capital" does not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i). Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005).

Accordingly, the Complainant satisfies Paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that a respondent lacks rights or legitimate interests in respect of the disputed domain name, but this burden is light. It is sufficient in the first instance for Complainant to allege a prima facie case, and if the evidence presented is conclusive or yields a positive inference that Respondent lacks rights or legitimate interests, the burden shifts to Respondent to rebut that presumptive proof.

On the record before the Panel, the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in <builderscapital.loan>.

Once the burden shifts, Respondent has the opportunity of demonstrating its right or legitimate interest by showing the existence of any of the following nonexclusive circumstances:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 

As noted above, Respondent has not complied with the certification requirement of the Policy. Except for the fact that Mr. Githens registered and is using a domain name virtually identical to Complainant's mark he is silent about the entity operating a loan business directly competitive with Complainant. As it may (see WIPO Overview, 3.0 at Sec. 4.8), the Panel performed limited factual research by going to Mr. Githens' website at https://webwit.pro/ (the co-respondent here is WebWit LLC).

On this website, Mr. Githens identifies himself as a "a seasoned Software Engineer and the proud owner of WebWit.pro. With over 20 years of hands-on experience, I specialize in end-to-end software solutions, from concept to deployment." He continues: "As the founder and owner of WebWit my mission is to deliver top-notch websites, web services, and applications that not only meet clients' expectations but exceed them. " Nowhere in this "About me: Who I am & What I do" is there any mention that Mr. Githens has any relation to a business that in all respects is competitive with Complainant. While in some contexts the phrase "builders capital" may be popular among other building lenders in their literature, it is not relevant to the question of rights or legitimate interests. 

Further, while <builderscapital.loan> appears to resolve to an authentic website the Panel finds that this appearance is deceptive. Respondent's annexes merely consist of contrasting web pages, which is Respondent's core business. He is versed in making websites different. However, Respondent adduces no evidence that other than himself there is a legitimate company doing business under the tradename "Builderscapital.Loan." He adduces no evidence that he is, in fact, using the domain name in connection with a bona fide offer of services. Rather, the evidence points to an opportunistic registration that seeks to take advantage of the goodwill Complainant's mark has established over a lengthy period of time. 

With regard to Paragraph 4(c)(ii), the Respondent presents no evidence that before his registration of <builderscapital.loan> that he was commonly known by that name; nor with regard to Para. 4(c)(iii) does Respondent claim he is making a legitimate noncommercial or fair use of the domain name.

Accordingly, the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

Having determined that Respondent lacks rights or legitimate interests, the Complainant must then prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. The consensus expressed in WIPO Overview 3.0, section 3.1.4. is that "the mere registration of a domain name that is identical or confusingly similar . . . to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith." The Panel finds that this general proposition true is in this case.

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

(i)  circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)   the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)   the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent 's web site or location.

The first two of these circumstances are not applicable to this case, but the last two are. Respondent uses the disputed domain name to compete with the Complainant in the building loan services business. The Panel acknowledges that the Respondent has built a website in which the logo and Favicon are distinctly different as is the color scheme of the website. However, it is the targeting of the mark not the design of the website that determines liability. Only if there is no evidence of targeting does design become a factor in determining good faith.

Here, the evidence establishes that the Respondent built the <builderscapital.loan> website with prior knowledge of the Complainant and its mark and that it sought to take advantage of the mark by registering it in the dot loan space. See American Society of Landscape Architects, Inc. v. Jenel Murgu / XM Solutions, FA 2143345 (Forum Mar. 28, 2025); also American Council on Education and GED Testing Service LLC v. WA, FA 1614043 (Forum June 1, 2015) (finding respondent registered the disputed domain name in bad faith with knowledge of complainant's mark based on federal trademark registrations). Actual knowledge of the Complainant and its mark is transparent from the fact that Mr. Githens deliberately crafted his website with its different parts pretextually to make the argument that the two businesses are distinguishable.

The Panel rejects the Respondent's argument that "[t]he Addition of '.Loan' Creates a Clear Distinction" from Complainant's mark. Nor does the Panel accept the argument that the distinction that Respondent tries to make that "[t]he Complainant operates under builderscapital.com, while Respondent operates under Builders Capital.Loan, a TLD-specific distinction that differentiates the branding and online presence." The Panel finds these assertions entire pretextual.

Whether the word "loan' appears in the first or second level it reinforces the services offered by the Complainant. See Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), WIPO Claim No. D2014-1747 ("The Panel accepts that the expression 'Fifth Street' is or can be descriptive. The fundamental problem for the Respondent in the present case is that it is not descriptive of finance products or services. It has significance in relation to 'finance' only through its association with the Complainant as the Complainant's trademark.").

The Panel finds that the Respondent's use of the disputed domain name is likely to lead to confusion among internet users as to the sponsorship or affiliation of a competing business and is therefore evidence of bad faith and use. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

Accordingly, the Complainant has satisfied Paragraph 4(a)(iii) of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <builderscapital.loan> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Gerald M. Levine, Panelist

Dated: April 1, 2025