The Complainant is SFIL, France, represented by GODIN Associés, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / BCV BANQUE, Benin. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 12, 2021. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on August 6, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a public development bank created in 2013, with the French government as its principal shareholder. In 2020, the “Caisse des Dépôts et Consignations” became its main shareholder, with the French State retaining one share. Its main activities consist of financing services, directed to the French local public sector as well as to private investors who conclude export credit agreements. The Complainant owns European Union Trade Mark registration No. 011417227 for SFIL registered on May 10, 2013. Its main corporate website is at “www.sfil.fr” and the Complainant’s domain names The Respondent who appears to be based in Benin, registered the disputed domain name on May 23, 2021. The disputed domain name resolves to a website that offers Internet users loans and credit redemptions. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights for its SFIL trade mark and that this is also the Complainant’s corporate name. It says that its SFIL mark is wholly incorporated into the disputed domain name and that accordingly the disputed domain name is confusingly similar to its mark and that the addition of “-group” before the generic Top-Level-Domain name (“gTLD”) does not prevent a finding of confusing similarity. The Complainant asserts that the Respondent is not commonly known by the disputed domain name as the first Respondent is a company named “Withheld for Privacy ehf”, which allows the owners of domain names to conceal their identity. The second Respondent is allegedly a company named “BCV BANQUE” and located in Benin. The Complainant notes that the website indicates that it is operated by a French company named “SAS SFIL GROUP” which name does not match with the company name of the registrant, i.e., the second Respondent, “BCV BANQUE”, and in fact says the Complainant the SAS SFIL Group does not exist as there is no record of it in the French company register. The Complainant also submits that it has not licensed or permitted the Respondent to use its registered trade mark and that in circumstances of the Complainant having used and registered the SFIL mark long before the registration of the disputed domain name, there is no bona fide or legitimate use of the disputed domain could reasonably be claimed. Finally, it says that the Respondent’s failure to respond to the Complainant’s counsels three cease and desist letters sent in June 2021 is a further indication that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the term “SFIL” was originally used by the Complainant as an acronym in association with “Société Française de Financement Local” but that “SFIL” is now used alone as its trading name and trade mark. It submits that the word “SFIL” is distinctive, as it is not commonly known to have a specific meaning in French or English and does not designate financing or banking services and as a result, says the Complainant, it was unlikely that the second Respondent, could not have been aware of the Complainant or of its mark when it chose the disputed domain name. It notes, in any event, that a quick check of the Internet would have revealed the Complainant’s SFIL mark. The Complainant notes that the first Respondent is a company that provides privacy services and says that this service has been used by the true Respondent, as identified by the registrar after the Complaint was filed, to be “BCV BANQUE” located in Benin. However, says the Complainant, based on its checks for this entity it appears to be fraudulent, noting that its street name is described as “Cotonu” which is rather the Beninese city of its location and its corporate email address is at a G-mail account. Further, submits the Complainant, the website at the disputed domain name indicates that it is operated by a French company named “SAS SFIL Group” with a French postal address, a French mobile number, and Whatsapp address. This, says the Complainant, neither corresponds with the Respondent’s name nor based on the Complainant’s searches, does it exist as a registered company in the French company register, or on the French Financial Firms Register maintained by the French Prudential Control and Resolution Authority. It notes that the only result for “SFIL” is the Complainant. According to the Complainant, the Respondent is obviously seeking to confuse Internet users seeing the disputed domain name into thinking that it and the website to which it resolves is operated or endorsed by the Complainant, when this is not the case. The Complainant also submits that the First Respondent appears to have engaged in a pattern of similar conduct using other domain names but which resolve to websites featuring almost identical descriptions to the website to which the disputed domain name resolves. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns European Union Trade Mark registration No. 011417227 for SFIL registered on May 10, 2013. The Complainant’s SFIL mark is wholly incorporated into the disputed domain name and even though the disputed domain name also includes the addition of “-group” before the gTLD, the Panel finds that this does not prevent a finding of confusing similarity. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SFIL trade mark and Complainant succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant has asserted that the Respondent is not commonly known by the disputed domain name noting that the first Respondent is a company named “Withheld for Privacy ehf”, which allows the owners of domain names to conceal their identity and that the second Respondent is allegedly a company named “BCV BANQUE” located in Benin. As the Complainant notes, the website at the disputed domain name indicates that it is operated by a French company named “SAS SFIL GROUP”. This obviously does not match with the company name of the proper registrant of the disputed domain name, namely the Respondent, “BCV BANQUE”, and the Panel notes the evidence submitted by the Complainant that the SAS SFIL Group does not legally exist as there is no record of it in the French company register. The Complainant has also submitted that it has not licensed or permitted the Respondent to use its registered trade mark and that in circumstances of the Complainant having used and registered the SFIL mark long before the registration of the disputed domain name, there is no bona fide or legitimate use of the disputed domain that could reasonably be claimed. The Panel also notes the Respondents’ failure to respond to the three cease and desist letters sent by the Complainant’s lawyers in June 2021. Had the Respondent been a bona fide entity in the financial services market then it could reasonably have been expected to explain its conduct and to seek to rebut the Complainant’s case. The Panel finds, based on the evidence submitted by the Complainant, that SAS SFIL Group, which purports to operate the website to which the disputed domain name resolves, is not a French legal entity nor a regulated financial services provider in France and that the website is likely to be fraudulently operated by the Respondent based in Benin. This conclusion is further reinforced by the Respondent’s use of a privacy service in an attempt to conceal its identity. Overall, the Complainant has made out a prima facie case that the Respondent has not otherwise used and is not known by the disputed domain name and therefore has no rights or legitimate interests in the disputed domain name. As this case has not been rebutted by the Complainant, the Panel finds that the Complainant succeeds under this element of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered on May 23, 2021, long after the Complainant started its business and registered its European Union Trade Mark 011417227 for SFIL on May 10, 2013. The Panel notes that the Complainant now uses the mark SFIL alone as its trading name and trade mark. It finds that the word “sfil” is highly distinctive in relation to banking and financial services and that it is not commonly known to have a specific meaning in French or English and does not generically designate financial or banking services. Noting also that a quick check of the Internet would have revealed the Complainant’s SFIL trade mark and that there is no other credible rationale for the use of the mark SFIL in the disputed domain name in relation to a website and business promoting financial services, the Panel finds that the Respondent must have been aware of the Complainant and of its SFIL mark at the date of registration of the disputed domain name. There is evidence to suggest that the “SAS SFIL GROUP”, being the operating entity recorded on the website at the disputed domain, does not even exist and is certainly not a permitted regulated financial services entity in France. In circumstances also, as submitted by the Complainant, that its address and contact details seem either incorrect or do not appear to be credible and also noting that the first Respondent appears to be the registrant of a number of domain names that resolve to websites with similar content and promoting similar services, it seems more likely than not that the SAS SFIL Group business is entirely fictional. The Panel’s view in this regard is only reinforced by the fact that no response was ever received to the Complainant’s representatives’ three cease and desist communications and that the Respondent has used a privacy service in an attempt to conceal its identity. The Panel agrees with the Complainant that the Respondent is obviously seeking to confuse Internet users seeing the disputed domain name into thinking that it and the website to which it resolves is operated or endorsed by the Complainant so as to drive traffic to its website at the disputed domain name. While there is no evidence of actual instances of fraud on the record, in circumstances that the French legal entity listed on the website at the disputed domain name does not exist and is not a regulated financial services provider, the indicators all point in that direction and this amounts to use in bad faith of the disputed domain name. However, even if the Panel is wrong in this regard and the Respondent is in fact using the disputed domain name in order to divert Internet users for its own commercial purposes, then this still amounts to conduct fulfilling the requirements of paragraph 4(b)(iv) of the Policy, which is evidence of registration and of use in bad faith. As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complainant also succeeds under this element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Alistair Payne
Sole Panelist
Date: August 20, 2021
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