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Posts Tagged ‘Redirected’

Two Mattress Companies In Pillow Fight Over Domain

Friday, April 2nd, 2010

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In the recent cybersquatting case of National Bedding Company L.L.C. v. Back To Bed, Inc. (WIPO D2010-0106, March 24, 2010), a single member Panel was faced with a dispute over the domain www.americasmatresses.com. Complainant sells mattresses using the service mark AMERICA’S MATTRESS. It maintains a web site at www.americasmattress.com. Complainant has two registered marks relating to mattresses. The Respondent operates a number of mattress stores, also in the state of Illinois. Respondent failed to respond to the dispute. Respondent maintains a web site at www.backtobed.com. The disputed domain name was first registered in 2004.

Paragraph 4(a) of the ICANN UDRP Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) The respondent has no rights or legitimate interests with respect to the domain name; and (iii) The domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel found that “the disputed domain name, which is merely the plural form of the Complainant’s mark, unquestionably is confusingly similar to the mark.”

The Panel next addressed whether Respondent had any rights or legitimate interests in the domain, and recognized that although there was no response by the Respondent, the Panel chose to review the facts.

The Panel is not persuaded from the record of this case that the Respondent registered and has used the disputed domain name based on a good faith belief that the disputed domain name’s value was attributable to its generic or descriptive characteristics. It can scarcely be gainsaid from the record that the Respondent was unaware of the Complainant’s prior use of the AMERICA’S MATTRESS mark, given that the Complainant and the Respondent compete directly with each other in the Chicago, Illinois area and over the Internet. To the contrary, the Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the initial interest confusion between the domain name and the Complainant’s mark, intending to attract Internet users to the Respondent’s website. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

Regarding the final element, the Panel relied on its prior conclusions regarding that Respondent must have known of Complainant due to the geographic proximity. The Panel found that Respondent “intentionally attract[ed] Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation.”

Ultimately, the Panel found that Complainant satisfied all three elements, and ordered the domain be TRANSFERRED.

Frederick’s of Hollywood Wins Ten Typosqautted Domains

Friday, December 4th, 2009

         Frederickslogo_FREDERICKS

In the recent cybersquatting domain dispute of Frederick’s of Hollywood Group Inc. v. Blue Water LLC FA1290927 (Nat. Arb. Forum, December 3, 2009) a single member Panel was faced with a dispute over ten domains. Complainant, uses the marks FREDERICK’S OF HOLLYWOOD and FREDERICK’S related to its women’s clothing and lingerie business since 1946. Complainant maintains a web site at www.fredericks.com. Complainant has a specific third party affiliate program, allowing fees to be paid to authorized third parties for directing traffic to Complainant’s official site. The affiliate policy specifically restricts the use of misspelled domains. Respondent registered one of the domain in 2003 and the other nine in 2006. According to the decision, all of the disputed domain names resolved to Complainant’s web site.        

Paragraph 4(a) of the ICANN UDRP 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.

The Panel began its analysis, noting that Frederick’s of Hollywood has sufficiently shown its rights to the marks. The Panel found that the domains contained minor changes which were not sufficient to distinguish them from Complainant’s mark.

Additionally, one or more of the following changes were made in each disputed domain name to the mark (1) the addition of one extra letter; (2) the transposition of two letters in the mark; or (3) the replacement of one letter in the mark with another.  The Panel finds that these changes are insufficient to overcome the confusing similarity that arises from using Complainant’s mark in the disputed domain name. 

The Panel found the domain were confusingly similar to Frederick’s marks.  

Moving to the second element, the Panel noted that Frederick’s presented a prima facie case, and despite the lack of response from Respondent, it would still review the record. Complainant contended that Respondent was not licensed to use the marks. Additionally, the Panel found that Respondent was not commonly known by the disputed domains. The Panel found that Respondent’s attempt at profiting from Complainant’s affiliate program using these typosquatted domains was not a bona fide use. Additionally, the act of typosquatting was found to be evidence of lacking rights or legitimate interests. The Panel found that this second element was satisfied by Complainant.

Moving to the final element, bad faith, the Panel noted that the disputed domains began to be registered nearly forty-five years after Frederick’s established trademark rights. The Panel explained that since the disputed domains resolved to Complainant’s own web site, that consumers would be confused as to affiliation or control. Additionally, since the domains contained typographical errors, this was evidence of bad faith. Lastly, by violating Complainant’s affiliate program, this was also evidence of bad faith.

Ultimately, the Panel found that Complainant satisfied all of the elements, and ordered all ten domains be TRANSFERRED.

Ashley Judd Gets Her Name and Domain… Thirteen Years Later.

Thursday, October 8th, 2009

      ashley_judd

In the recent domain name dispute decision of Ashley Judd v. Alberta Hot Rods, Jeff Burgar (WIPO D2009-1099, September 25, 2009), a single member Panel was faced with a dispute over the domain www.ashleyjudd.com. Judd is the well known actress who has appeared in countless film and television roles throughout the 1990’s and 2000’s. Respondent registered the disputed domain in 1996 and failed to reply to the Complaint.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which she has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Judd had common law rights in her name.

It is well-established that where an actor has a sufficient reputation for her professional work under her name or stage name, that name is a marke in which she has rights for the purpose of the UDRP: see, for example, Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. The Panel finds on the evidence that the Complainant has amply sufficient reputation to satisfy this requirement. As a result, the Panel found the Judd satisfied the first element.

Moving to the second element, the Panel found that Respondent had failed to use the domain in connection with a bona fide offering of goods or services. Instead the panel found that the disputed domain was used to drive traffic to another web site with the intention of obtaining revenue from sponsored links. The Panel also found that Respondent was not commonly known by the disputed domain.

Moving to the final element, bad faith, the Panel noted that Judd’s reputation as an actress had been well established by 1996. Additionally, the Panel found that Respondent engaged in a pattern of registering domain containing names of famous actors and celebrities. The Panel declined to apply any possible defense of laches. Ultimately, the Panel found that there was no contrary evidence and concluded that Judd satisfied all the elements. The Panel ordered the domain be TRANSFERRED.

SKOAL Tells Cybersquatter To Chew On Something Else

Wednesday, July 15th, 2009

In the recent domain name dispute decision of U.S. Smokeless Tobacco Manufacturing Company LLC v. Four Feathers LLC, FA1266017 (Nat. Arb Forum July 14, 2009), a single member panel was faced with a dispute over the domain www.skoal.com. As explained in the brief factual background, “Complainant, U.S. Smokeless Tobacco Manufacturing Company LLC, sells smokeless tobacco products and has been in business since the 1800s.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SKOAL mark (i.e., Reg. No. 504,609 issued December 7, 1948).” Complainant appears to maintain a web site at www.skoalbrotherhood.com. The disputed domain was registered in 1997. (There is no discussion throughout the opinion about the delay in bringing this dispute.)

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.

In addressing the first prong the Panel found the domain was identical except for the additional of the generic top-level domain “.com.” As many Panels in the past have explained this is insignificant and this Panel quickly moved to the second element.

In discussing the second element, the Panel explained:

 The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 

The Panel found that respondent’s web site contained links to competing products and that this was not a bona fide offering of goods and services. The Panel also determined that there was no evidence presented to show that Respondent was commonly known by the domain.

Moving to the last element, bad faith, the Panel found as follows:

Respondent is using the <skoal.com> domain name to resolve to a website featuring links to competing products presumably for the profit of Respondent.  The Panel finds Respondent’s use of the disputed domain identical to Complainant’s SKOAL mark to redirect Internet users interested in Complainant’s products to competing website links constitutes disruption and bad faith registration and use under Policy ¶ 4(b)(iii)….In addition, the Panel finds Respondent presumably receives click-through fees from links on the disputed domain name sponsored by Complainant’s competitors.  Respondent likely profits from Internet users’ likelihood of confusion with Complainant’s affiliation with the disputed domain name.  The Panel finds that this use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).

Ultimately, the Panel finds that Complainant proved all three elements and agreed to order the TRANSFER of the domain.

Looking For The Weather Channel…But Finding Porn?

Tuesday, June 30th, 2009

In the recent domain dispute decision of The Weather Channel, Inc. v. Versata Software, Inc. (WIPO D2009-0548, June 23, 2009) a single member Panel was faced with a dispute over the domain www.weatherchannelkids.com. The Weather Channel has provided a cable network since 1982 and maintain two relevant web sites at www.weather.com and www.theweatherchannelkids.com Complainant submitted evidence that it has provided features on its web site for children since at least 2002 and created another domain www.weatherclassroom.com in 2003. Respondent was using the disputed domain to redirect viewers to www.porntube.com.

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (ii) That the disputed domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that the domain only differed from Complainant’s mark in that it also added the generic words “the” and “kids” making it nearly identical to the mark. The Panel found Complainant satisfied this element.

In the second element the Panel noted that Complainant did not authorize Respondent to use the mark THE WEATHER CHANNEL. Additionally, the Panel found that Respondent was not commonly known by the domain name. Respondent failed to file a response thus failing to discharge the evidentiary burden which shifted after Complainant proved a prima facie case.

Moving to the third element, bad faith, the Panel noted that Respondent must have been aware of Complainant’s mark due to its worldwide recognition. The Panel further explained:

The Respondent has offered no reason for its choice of the Domain Name, and there is no apparent connection between the three words which constitute the Domain Name and the use of the Domain Name for links to pornography websites. Furthermore, the evidence establishes that the Respondent has in the past registered domain names for the bad faith purpose of trading off trademark owners’ goodwill in their marks.

As a result, the Panel found Complainant proved all elements and agreed to TRANSFER the disputed domain.

Sigourney Weaver Beats Another “Alien”

Friday, June 26th, 2009

In the recent domain dispute decision of Sigourney Weaver v. Stephen Gregory a/k/a ‘THIS DOMAIN NAME IS FOR SALE’ (Nat. Arb. Forum 1256394, May 22, 2009) a three member Panel was faced with a dispute over www.sigourneyweaver.com. We all know who Sigourney Weaver is, so we won’t waste time with her list of credits. (Although she deserves an extra nod of appreciation for the Alien movies) Respondent, purportedly located in the Philippines, registered the disputed domain in 1999, nearly 20 years after her emergence in the entertainment world. Weaver argued that the disputed domain was being used to automatically forward to a pornographic web site located at www.clubpink.com which then takes the user to www.nymphogirls.com. Weaver also argued that Respondent was using the domain to sell it for profit, based upon the Whois information which stated “Stephen Gregory ‘THIS DOMAIN NAME IS FOR SALE.’”

Under the ICANN UDRP policy Complainant must prove (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.

In addressing the first element, the Panel noted that Weaver did not have a federal registration for her name and thus reviewed the evidence to determine if she possessed common law rights. The Panel found that her career has made her sufficiently famous and that she demonstrated secondary meaning to establish common law rights. Thus the Panel found that the domain was identical to Weaver’s rights in the mark.

Moving to the second element, the Panel noted that Weaver made a prima facie case that Respondent lack any rights or legitimate interests. This was based on the fact that Respondent was not commonly known by the disputed domain name, as stated earlier regarding the Whois information. Additionally, since the domain was being linked to pornographic material, this use was not in connection with a bona fide offering of goods and services. The Panel noted that Respondent stopped the forwarding to the pron web sites after receiving a cease and desist from Complainant. Lastly, the Panel found that since Respondent was offering to sell the domain this showed a lack of legitimate rights or interests in the domain.

Moving to the final element, bad faith, the Panel noted that Respondent had been involved in numerous prior analogous UDRP proceedings and that he engaged in a pattern of bad faith registration and use. Additionally, the Panel noted that the pornographic nature of the redirected web site also satisfied the bad faith element.

Ultimately, the Panel ruled to TRANSFER the disputed domain.

1-800-DENTIST Gets An Extraction On A Domain

Wednesday, June 10th, 2009

In the recent decision of Futuredontics Inc. v. 1-800 Domain Names, LLC (WIPO D2009-0296, May 31, 2009) a single member Panel was faced with a dispute over the domain www.1-800-dentist.com. Complainant operates a dentist referral and information business since 1985, and maintains a web site at www.1800dentist.com. Complainant has trademark registrations for “1-800-DENTIST” and “1800DENTIST” in connection with those services. Respondent did not answer the Complaint.

The Panel noted that paragraph 4(a) of the Policy directs that Complainant must prove each of the following: 1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and 2) that Respondent has no rights or legitimate interests in respect of the domain name; and 3) that the domain name has been registered and used in bad faith.

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel simply found the domain to be identical or confusingly similar without any additional factual support or explanation. Instead the Panel just cited numerous prior domain dispute decisions as support.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Respondent failed to challenge or argue for his rights, was not commonly known by the disputed domain, and had not acquired any trademark rights. As a result, the Panel found Complainant satisfied this element.

The Panel spent most of the decision discussing the final element, whether the disputed domain was registered and used in bad faith. The Panel explained:

There is also proof in the record that Respondent may have provided false or misleading information in connection with the registration of the domain name <1-800-dentist.com>, which is a further indicia of bad faith. There is also proof in the record that Respondent has falsely linked the website to which the domain name <1-800-dentist.com> resolves to alternating websites, both of which falsely imply some connection between that website and the services of Complainant. This is bad faith. The record suggests that on certain days Respondent causes the website to direct consumers to Complainant’s website, while on other days Respondent will divert consumers to different websites not related to Complainant. It appears that even when Respondent directs consumers to Complainant’s website, Respondent provides advertising for businesses not associated with Complainant. Respondent’s registration of the domain name, and the use of that domain name in this fashion, prevents Complainant from fully controlling the commercial use of its trademarks and more particularly the domain name which is identical or substantially similar to Complainant’s registered trademarks. This is bad faith.

Ultimately, the Panel found that Complainant proved all three ICANN UDRP elements and agreed to TRANSFER the disputed domain.

President Bill Clinton Can’t Use His Own Name

Thursday, June 4th, 2009

In the recent decision of William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception (Nat. Arb Forum 1256123, June 1, 2009), a single member panel was faced with a dispute over three domains: www.williamclinton.com, www.williamjclinton.com and www.presidentbillclinton.com. This very interesting case provides an insight into the potentially arbitrary nature of the non-binding UDRP arbitration system and the application of the three element ICANN UDRP test for domain disputes. Complainant needs no introduction, so some background on Respondent is helpful. The Panel summarized Respondent’s Additional Submission arguments, as follows:

Respondents timely Additional Submission first focuses on the issue of common law marks, arguing that most of the famous person common law mark opinions are defaults.  As to bad faith, Respondent notes that he has never acted in bad faith.  When requested, for example, [Respondent] surrendered domain names to the United States Government.  Respondent also states that he registered domain names of famous persons in part to make a point concerning the ease of registration of such domain names.  He further notes that he has never sold a politician’s domain name.  He also states that he has worked with Senator Hatch and others to promote the idea that some domain names deserve protection under the federal statutes, including the names of famous places and politicians.

The Panel began its analysis of the case by “reluctantly” [actual words used by Panel] finding that Clinton had established a common law mark in his name. Interestingly, the Panel felt obliged to also note that he is “partially responsible for the problems created by allowing common law marks in personal names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat. Arb. Forum Sept. 11, 2000).”

In addressing the first prong, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel went through a more detailed analysis of applying the common law mark theory. Regarding one of the disputed domains, the Panel noted, “The addition of the term “president,” or the use of an abbreviated version of Complainant’s mark in a disputed domain name creates a confusing similarity between the disputed domain name and Complainant’s mark.” Ultimately, the Panel found Complainant President Clinton had satisfied this element.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel explained:

Complainant has shown that Respondent is not commonly known by the disputed domain names.  Complainant states that Respondent is known as “web of deception,” which is also how Respondent is identified in the WHOIS information.  Complainant also claims that Respondent is not affiliated in any way with Complainant.  Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 

The Panel went further to make the following findings:

Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Respondent’s rebuttal fails.  Respondent’s disputed domain names resolve to an official website related to the Republican Party, which is the party in direct opposition to the political party Complainant endorses.  Such use of the disputed domain names does not equate to a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 

The Panel found that Clinton had satisfied the second prong and moved to the third prong, whether Respondent registered and used the domain in bad faith. This is where the Panel took some serious liberties in applying the UDRP policy.

However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed domain names to resolve to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent is allegedly using the disputed domain names in order to intentionally attract Internet users to an opposing website by creating confusion among Internet users who are seeking Complainant’s WILLIAM CLINTON mark.  Allegedly, the disputed domain names resolve to the official Republican party website in direct competition with Complainant, giving the impression Complainant is affiliated with its political competitor.  The Panelist declines to find that this is a violation of Policy ¶ 4(b)(iv) and is not bad faith registration and use….Links to the Republican National Committee website are simply not within the scope of this Policy.

As a result the Panel found that Clinton had not established bad faith and therefore DENIED the request for transfer.

DefendMyDomain Commentary: We are unsure how the Panel can square the second and third prong in light of the evidence and the finding that Respondent “use[s] the disputed domain names in order to intentionally attract Internet users to an opposing web site by creating confusion.” Since the domain was owned by “Web of Deception” and was being redirected to a Republican National Committee website, it seems clear that bad faith existed. Additionally, Respondent’s own arguments were that his reason for ownership was to show the ease of registration of such famous person domain names and was trying to promote the idea of protection under the federal statutes. One should ask whether Respondent’s use of the domain falls squarely within section 4(b)(iv) of the UDRP policy which discusses instances of evidence of bad faith and states “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” One should also ask whether Respondent’s admissions fit into section 4(b)(ii), which states “(ii) you have 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 you have engaged in a pattern of such conduct.” This single Panelist decision teaches us that for important domains, three member Panels may provide different results.

DROPSTOP Can Stop Cybersquatters Too

Wednesday, June 3rd, 2009

In the recent decision of Schur International A/S v. Jorge Massa (WIPO D2009-0450, May 25, 2009), a single member Panel was faced with a dispute over www.drop-stop.com. Complainant, is a Danish company which markets a wine pouring device to prevent spilling. Complainant has trademark protection for the DROPSTOP mark in Australia, Canada, and also has a Community Trademark. Complainant maintains web sites for the product which include www.dropstop.com and www.dropstop.dk.

The Panel noted that although the domain was registered on March 14, 2005, users were redirected to another web site which “offered wine pourers similar to the ones offered on the Complainant’s websites.”

The Panel first began with the “identical or confusingly similar” prong of the ICANN UDRP three element test for domain disputes. The Panel noted that Complainant owned numerous trademarks and that the only difference between the domain and the mark was the addition of the hyphen. This insignificant change was not enough and the Panel found Complainant satisfied this prong.

The next element, whether Respondent had any rights or legitimate interests in the domains, was also quickly dealt with by the Panel. The Panel found that Complainant put forth a prima facie case in regards to this prong. Since Respondent did not reply to the dispute the analysis appears to end there, and the Panel found Complainant satisfied this element as well.

The last element, whether the domain was registered and used in bad faith, provided the most amount of analysis by the Panel. The Panel noted:

It is suggestive of the Respondent’s bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. The Complainant submitted evidence, which shows that the Complainant’s trademark – DROPSTOP is registered in different territories around the world and is known in the wine business and that its trademark would be recognized publicly. The Complainant’s DROPSTOP trademark was registered as early as 1992 in Australia (see Australian trademark registration No. B584204 – DROPSTOP (stylized) with the registration date of August 12, 1992). The Respondent registered the disputed domain name long after the Complainant registered its DROPSTOP trademarks….A review of the web site operating under the disputed domain name reveals it automatically leads consumers to another website – “http://tds.com.ar/drop-stop” – on which the consumers are offered wine pourers that are similar to the ones offered by the Complainant in the Complainant’s website under the name “Dropstop”. The Respondent’s use of the name “dropstop” to promote such similar wine pourers clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and the DROPSTOP trademark and product. Respondent’s actions constitute bad faith.

The Panel went further and explained:

In light of the Complainant’s distinctive registered trademark, the Panel finds that the registration of the disputed domain name in the name of the Respondent shows the Respondent intent to operate a web site offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either the source of the Complainant goods or associate the Respondent with the Complainant. The use of the Complainants distinctive trademark for quasi identical goods constitute bad faith on behalf of the Respondent.

Ultimately, the Panel found Complainant satisfied all three elements and agreed to TRANSFER the domain.

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