No bad faith where there was no evidence Respondent targeted Complainant’s mark

In the case of Bagley Argentina S.A. v. Anything.com Ltd., a three-member WIPO Panel denied the Complainant’s efforts to have the domain name <bagley.com> transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith.

The Complainant is based in Argentina and has been in the business of selling biscuits and crackers since 1864. It claimed rights in its mark BAGLEY which it has registered in several countries, though most of those registrations were acquired after 2002.  The Respondent registered the disputed domain name on September 27, 1999, and used the disputed domain name to establish a website which pay-per-click links.

The Panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. The Respondent denied it knew anything about the Complainant’s mark when it registered the disputed domain name. The Panel, for a number of reasons, sided with the Respondent. Among the reasons for the Panel’s decision was the lack of any showing that the Respondent had attempted to target the Complainant or the Complainant’s trademark.


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

No bad faith where US-born Japanese entrepreneur plausibly denied knowing of Swiss Complainant’s mark

In the case of ETH Zürich (Eidgenössische Technische Hochschule Zürich v. Mitsuhiro Suwa, a three member WIPO Panel denied the Complainant’s efforts to have the domain name transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith.

The Complainant is one of the leading international universities for technology and the natural sciences. Located in Switzerland, the Complainant has been using the mark ETH for more than 100 years. The Respondent, an American born entrepreneur living in Japan, purchased the disputed domain name in 2014. He claimed that he acquired the disputed domain name for use by his company in potential design projects.

The Panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.

While the Panel did not doubt that the Complainant is an elite university, its renown as ETH particularly in the United States of America and Japan (the two countries in which Respondent is known to have lived) had not been established in this record such that the Panel would find Respondent’s denial of any knowledge of the Complainant implausible. Respondent is not an engineer and does not speak German. These two facts, coupled with the lack of evidence put forth by Complainant about the fame of the ETH mark, supported Respondent’s denial of knowledge of the mark. Moreover, Respondent’s registration of several other domain names tended to corroborate the Respondent’s claim that he acquired the disputed domain name in part because it is short and therefore attractive to potential clients or business partners.

ETH Zürich (Eidgenössische Technische Hochschule Zürich v. Mitsuhiro Suwa, WIPO Case No. D2015-2354 (April 29, 2016)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Complainant failed to show trademark rights in mark comprising disputed domain name

In the case of Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd, a WIPO Panel denied the Complainant’s efforts to have the domain name <banskoexpresstransfer.com> transferred because the Complainant failed to prove that the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant had rights.

The Complainant runs an online business that allows passengers to book and pay for transfers from airports in Bulgaria and Greece to the Bulgarian ski resort of Bansko, and claimed common law trademark rights in the mark BANKSO EXPRESS. The Panel found that the Complainant failed on the first UDRP element — that the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant had rights — because the Complainant did not provide sufficient evidence that the mark BANKSO EXPRESS, a descriptive term, had acquired secondary meaning.

The Complainant did not provide information such as advertising figures to show the reach or extent of his business, the income derived from the trade that he conducted under the trademark BANSKO EXPRESS, or support from members of the public or persons involved in his trade to prove the existence of a secondary meaning associated with his trademark. Given the descriptive nature of the Complainant’s business name, the Panel found this to be a high hurdle to overcome.

In these circumstances, the Panel found that the Complainant failed to prove that the disputed domain name was identical or confusingly similar to a trademark or service mark in which the Complainant had rights, and for that reason the Complaint failed.

Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd. WIPO Case No. D2016-0306 (April 20, 2016)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

UDRP complaint failed under second element where there was no evidence Respondent intended to profit from and exploit Complainant’s trademark

In the case of Mark Overbye v. Maurice Blank, Gekko.com B.V., a WIPO Panel denied the Complainant’s efforts to have the domain name <gekko.com> transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name.

The Complainant was in the business of manufacturing boats used for water sports such as waterskiing, wake boarding and wake surfing. It owned the registered U.S. trademark (issued in 1996) for an image of a type of lizard and the word “gekko”. The Respondent registered the disputed domain name in 2001, and at some point in the past used the disputed domain name to establish a site about European travel. The Complainant alleged that the Respondent was not using the disputed domain name for a valid ongoing business, but was “sitting on the [disputed domain name] since 2001 without any connection to any business or product”.

The Panel found that the Complainant failed on the second UDRP element — no rights or legitimate interests — because there was no evidence of circumstances indicating that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the Complainant’s trademark. The Panel observed that the word element of the Complainant’s mark had a broader meaning than the use the Complainant was making of it, as it referred to a type of reptile. The Panel considered that normally a respondent has a right to register and use a domain name to attract internet traffic based on the appeal of commonly used descriptive or dictionary terms, unless there is some aim to wrongfully target the complainant’s mark. In this case, the Complainant did not provide any proof indicating that Respondent’s aim in registering the disputed domain name was to profit from and exploit Complainant’s trademark.

Mark Overbye v. Maurice Blank, Gekko.com B.V., WIPO Case No. D2016-0362 (April 15, 2016).


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Panel denies complaint where dispute between parties was outside scope of UDRP

In the case of BubbleMania and Company LA, LLC ® v. Caroline Dues / BubbleMania and Company Inc, an NAF Panel denied the Complainant’s efforts to have the domain name <bubblemaniaandcompany.com> transferred because the dispute between the parties involved contractual issues outside the scope of the UDRP.

The Complainant is in the business of providing entertainment services, including soap bubble, science themed performances for children. It bought the company from a previous owner, who had apparently hired the Respondent to register what became the disputed domain name. After the transaction, the Respondent refused to turn the disputed domain name over. This UDRP action followed.

The Panel made no findings under any of the three UDRP elements, instead dismissing the complaint on the preliminary issue of whether the dispute was within the scope of the UDRP. The Panel compared this case to an earlier case of Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), in which that panel stated:

A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.

In this case, that Panel found that the dispute contained questions of contractual interpretation, and thus fell outside the scope of the UDRP. Because the Panel found this matter fell outside the scope of the UDRP, it dismissed the complaint.

BubbleMania and Company LA, LLC ® v. Caroline Dues / BubbleMania and Company Inc, NAF Claim Number: FA1603001663923 (April 11, 2016)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Questionable decision in UDRP case — Panel finds no bad faith even where Complainant’s trademark registration showed use in commerce prior to registration of domain name

In the case of Fiberstar, Inc. v. Merlin Kauffman, a three-member NAF Panel denied the Complainant’s efforts to have the domain name <fiberstar.com> transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith. The Panel’s decision is questionable, in that it apparently ignored evidence of the Complainant’s use of its mark prior to the date the Respondent registered the disputed domain name.

The Complainant is in the business of marketing citrus-based food ingredients, and claimed trademark rights in its mark FIBERSTAR, which it registered in the U.S. in 2006. The registration listed a date of first use in 2001. The Respondent registered the disputed domain name in 2002, and is in the Panel’s view, “a legitimate reseller of generic-word domain names.”

The panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. Apparently ignoring the alleged 2001 date of first use set forth in the Complainant’s registration certificate, the Panel found that the Complainant “provided little evidence that it possessed trademark rights in its FIBERSTAR mark when the disputed domain name was registered on March 27, 2002.” The Panel continues its analysis:

Complainant did not obtain a recognized trademark registration for its trademark until 2006, well after registration of the disputed domain name. Complainant could have possibly gained enforceable common law rights in its mark prior to the trademark registration, and Complainant does allude to its founding in 1997. However, Complainant has provided no evidence, in terms of notoriety, revenues, promotion, etc., to the Panel which might sustain a finding that Complainant had obtained common law rights in the FIBERSTAR mark prior to trademark registration in 2006, let alone prior to the disputed domain name registration in 2002. See Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS, D2008-1036 (WIPO Sept. 30, 2008) (“Relevant evidence of [common law rights] includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Mary’s Futons, Inc. v. Texas Intern’l Prop., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, numbers of customers. “).

Based on these considerations, the Panel found “no basis upon which to decide that the disputed domain name was registered with knowledge of Complainant’s rights in the mark and thus possibly in bad faith.” One is left to wonder why the alleged date of first use in the trademark registration — a fact which the Complainant would have asserted under penalty of perjury to the United States Patent Trademark Office and would have been subject to the scrutiny of a government examiner — did not establish a means by which the Respondent would have known of the Complainant’s rights.


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Gripe site owner prevails in UDRP action brought by company that allegedly rescinded offer to hire him

In the case of Capgemini North America, Inc. v. Randel Tomina, an NAF Panel denied the Complainant’s efforts to have the domain name <capgeminirecruiting.com> transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name, and because the disputed domain name was not registered and was not being used in bad faith.

The Complainant is an international provider of consulting, technology and outsourcing services and local professional services. The Respondent claims the Complainant rescinded an offer to hire him, and in September 2015 registered the disputed domain name for purposes of (according to the Respondent) warning others about the Complainant’s employment practices.

The Panel found that the Complainant failed on the second UDRP element — rights or legitimate interests — because the Respondent’s website qualified as a bona fide criticism site. There was no evidence, and the Complainant did not assert, that the Respondent’s site was a pretext for cybersquatting. For example, there was no evidence of an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. And the site indicated that it was “created to expose [the Complainant], a company that caused [the Respondent] over $100,000 in loses [sic].” Other language that had appeared on the site in the past included “Obviously, [the Respondent is] not affiliated with [the Complainant]. This is just an exposé site regarding [the Respondent’s] experience with [the Complainant] rescinding a job offer, effectively terminating [the Respondent’s] employment, without cause. If you’re looking for [the Complainant] you are in the wrong spot!”

Further the panel found that the Respondent did not register and use the disputed domain name in bad faith. The Panel found that the disputed domain name resolved to a legitimate gripe site. The Panel declined to hold that the Respondent registered the disputed domain name “primarily” for the purpose of disrupting the business of a “competitor,” under paragraph 4(b)(iii) of the UDRP. The facts did not support a determination that the Respondent competed with the Complainant in the business of providing consulting services and the evidence indicated that Respondent’s primary purpose in registering the disputed domain name was to inform third parties of his experience with the Complainant in connection with seeking employment. While Complainant contended that the Respondent registered and was using the domain name for leverage in obtaining a favorable settlement in his employment dispute with the Complainant, the site itself did not contain any mention that the Respondent was seeking compensation for his alleged losses and, as noted by the Complainant, Respondent, to date, had not filed a lawsuit in court.

Capgemini North America, Inc. v. Randel Tomina, NAF Claim Number FA1601001658191 (April 11, 2016)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

One Complainant, two similar domain names, two different outcomes

Success in UDRP actions largely depends on when trademark rights arise. A pair of recent UDRP decisions underscores the critical importance of a Complainant establishing that its trademark rights arose prior to the time the Respondent registered the disputed domain name. Two different Panels came to two different decisions concerning two very similar domain names (<rocketpay.com> and <rocketpays.com>). The key difference between the two cases is when the disputed domain name was registered relative to the first use of the Complainant’s trademark in commerce.

RocketPay.com

In the case of Rocketgate PR LLC v. Mack Sullivan, an NAF Panel denied the Complainant’s efforts to have the domain name <rocketpay.com> transferred because the Complainant failed to demonstrate the Respondent lacked rights or legitimate interests in the disputed domain name.

The Complainant is in the business of providing online payment services, and claimed trademark rights in its registered mark ROCKETPAY, which it first used in commerce in January 2014. The Respondent registered the disputed domain name nearly 12 years earlier, in November 2002, but as of the time of the filing of the complaint, did not use the disputed domain name in connection with an active website.

The Panel found that the Complainant failed to establish the Respondent lacked rights or legitimate interests. The Panel observed that Complainant only argued that the Respondent was “apparently making no business or other use of the registered domain” and that “there is no active web-page at the address.” Absent any “pre-existing rights which may be implacable to impugn a registration,” the Respondent in this case — who registered the disputed domain name first, prior to the existence of any trademark rights on the part of the Complainant — was entitled to use it for any legitimate purpose.

RocketPays.com

The same Complainant brought an action against a different Respondent over the domain name <rocketpays.com> (Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL). NAF assigned the case to a different Panel. In this case, the Respondent likewise did not use the disputed domain name to establish a website. But the key difference was that the Respondent did not register the disputed domain name until October 2014 — after the Complainant first used the ROCKETPAY mark in commerce, and likewise after it had filed its application to register that mark with the United States Patent and Trademark Office.

Takeaway

While at first glance the two decisions appear inconsistent, after some reflection, and application of the principles underlying the UDRP as an anti-cybersquatting mechanism, one can reconcile the two cases. One must remember that an action for cybersquatting under the UDRP is not the same as an action for trademark infringement. The UDRP seeks to curb abusive registration. In the case where the Respondent acquired the domain name prior to the time the Complainant’s trademarks arose, it is impossible to conclude the registration could be abusive. But in the second case, where the Respondent registered the domain name after the trademark rights arose, one may more reasonably make the inference of abusive registration.

RocketPay.com decision: Rocketgate PR LLC v. Mack Sullivan, NAF No. FA1602001662354 (April 5, 2016)

RocketPays.com decision: Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL, NAF No. FA1602001662361 (April 6, 2016


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Complainant did not assert rights during pre-action negotiations; Panel finds reverse domain name hijacking

In the case of Bryn Mawr Communications, LLC v. Linkz Internet Servicesa three-member WIPO Panel denied the Complainant’s efforts to have the domain name <eyetube.com> transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests, and failed to show that the Respondent registered and used the domain name in bad faith. Moreover, the Panel found that the Complainant engaged in reverse domain name hijacking in pursuing the action.

The Complainant provides online educational resources related to ocular health and practice management for ophthalmologists, and claimed trademark rights in its registered EYETUBE mark, which if first used in commerce in February 2008. The Respondent registered the disputed domain name in December 2005, and used the disputed domain name to establish a parked page with sponsored advertising.

Rights or Legitimate Interests

The Panel found that the Complainant failed to show that the Respondent had no rights or legitimate interests in the disputed domain name. The Respondent established its ongoing “use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.”

The evidence indicated that the links on the disputed domain name were related to the domain’s generic meaning. The disputed domain name consisted of two generic words, “eye” and “tube,” that have meanings independent of any connection with the Complainant’s business, and that together form a generic phrase related to television programming. Respondent used the disputed domain name in association with these generic meanings. Although the disputed domain name consisted one link to an eyewear retailer, that link was only visible upon a user’s custom search. In any event, the Panel found that the Complainant failed to show how the eyewear retailer was related to Complainant’s provision of educational resources to ophthalmologists.

Bad Faith

The Panel found that the Registrant did not register the domain name in bad faith, because the Respondent registered the domain name prior to the time that the Complainant established any trademark rights in its mark comprising the disputed domain name. Moreover, in this case, the Registrant’s offer to sell the disputed domain name to the Complainant for more than $145,000 did not constitute bad faith.

Reverse Domain Name Hijacking

Under the circumstances of this case, the Panel found that Complainant engaged in reverse domain name hijacking. It found that the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the UDRP. The following circumstances supported a finding of reverse domain name hijacking:

  • The Complainant acknowledged in the Complaint that the Respondent had registered the disputed domain name several years prior to the Complainant’s registration or use of its marks.
  • The Complainant must have known at the time that it registered its <eyetube.net>, <eyetube.org>, and <eyetube.info> domain names that the <eyetube.com> domain name was being used by Respondent and might never be available to Complainant.
  • At least three individuals employed by the Complainant initiated communications with the Respondent’s broker regarding the purchase of the disputed domain name between May 2011 and July 2015, and at no time over the course of those four years did the Complainant make any claim of right, reference any trade or service mark, or suggest it was seeking to settle a legal claim of any kind.
  • The Complainant filed its Complaint only after it failed to negotiate a sale of the disputed domain name.
  • The Complaint failed to make any mention of its pre-suit communications
  • The Complainant misleadingly indicated to the Panel that the disputed domain name contained an advertisement related to the Complainant’s business, when the advertisement at issue was generated through the Complainant’s own use of the disputed domain name’s search function and had no relation to the educational services offered by the Complainant.

For these reasons, the Panel found that the Complainant engaged in reverse domain name hijacking.

Bryn Mawr Communications, LLC v. Linkz Internet Services, WIPO Case No. D2016-0286 (March 29, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Demonstrable preparations to use domain name gave Respondent rights or legitimate interests

In the case of Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC, a WIPO Panel denied the Complainant’s efforts to have the disputed domain name <approve.me> transferred.  The Panel held that the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name.

The case provides an example where the Respondent may indeed be infringing the Complainant’s trademark,  but the circumstances do not give rise to cybersquatting as prohibited under the UDRP.

Timeline:

  • January 14, 2014 – The Complainant obtained a U.S. trademark registration for APPROVE ME in connection with “computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information”.
  • April or June 2014 – the Respondent acquired the disputed domain name.
  • May 7, 2014 – the Respondent incorporated a company in Utah under the name “Approve.me LLC”.
  • September 2014 – the Complainant learned of the Respondent’s acquisition of the disputed domain name.
  • October 3, 2014 – the Complainant sent a demand letter to the Respondent.
  • September 22, 2015 – the Respondent announces the launch of Approve.Me, a solution for retailers to offer a single application across the full spectrum of finance and lease products.

Rights or Legitimate Interests

The Panel observed that under paragraph 4(c)(i) of the UDRP, a Panel shall find that a Respondent has demonstrated rights or legitimate interests where the Panel finds that, based on an evaluation of all the evidence presented, before any notice to the Respondent of the dispute, the Respondent was using, or making 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.

In this case,  the Panel found that the Respondent had been making demonstrable preparations to launch a business under a name corresponding to the disputed domain name prior to receiving the Complainant’s cease and desist letter. The Panel credited the Respondent’s assertion that it was not aware of the Complainant and its business at the time it acquired the disputed domain name. Despite the Complainant’s assertions, the Panel found no objective evidence that would allow it to infer that the APPROVE ME trademark was in fact well-known or had a substantial profile in the financial services industry, such that the Respondent could be reasonably presumed to have known about it. Without such evidence, and taking into account that APPROVE ME is capable of being used and understood in a descriptive manner in respect of financial services (e.g., in statements such as, “approve me for credit”), there was no basis on the record on which the Panel could find that there was knowledge on the part of the Respondent that would call into question the bona fides of its adoption of the disputed domain name.

Bad Faith

Though it had sufficient grounds to deny the Complaint on the second UDRP element,  the Panel nonetheless also found that the Complainant failed on the third element,  namely,  bad faith registration and use.

There was no evidence that would allow the Panel to infer that the Respondent was aware of the Complainant prior to acquisition of the disputed domain name, and that the Respondent intended to capitalize on the Complainant’s reputation and goodwill. The Panel noted that did not, of course, mean that the Respondent’s activities may not infringe the Complainant’s trademark rights. That was, however, an issue that the Complainant would need to pursue separately in a different forum.

Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC, WIPO Case No. DME2015-0015 (March 18, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for information about general internet law.

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