LA Millennium Video
Productions v. Classic Moments Video Production
Claim Number: FA0611000856336
PARTIES
Complainant is LA Millennium Video Productions (“Complainant”), represented by Alicia
Daywalt, 813 Buena Vista, Arnold, MD 21012. Respondent is Classic Moments Video Production (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lamillennium.com>, <lamillenniumvideo.com>
and <lamillenniumvideoproductions.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 29, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 29, 2006.
On November 29, 2006, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <lamillennium.com>, <lamillenniumvideo.com>
and <lamillenniumvideoproductions.com>
domain names are registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
names. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On December 5, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 26, 2006 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@lamillennium.com,
postmaster@lamillenniumvideo.com and
postmaster@lamillenniumvideoproductions.com by e-mail.
A timely Response was received and determined to be complete on December 22, 2006.
On January 3, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant
has registered in
In September 2003, Ms. Fisher announced to Ms. Daywalt that she was leaving LA Millennium Video Productions and starting another company “Classic Moments Video Productions,” the later Respondent. Ms. Fisher was not forced to leave, but chose on her own to leave Complainant to start another company and had in fact registered her new trade name “Classic Moments Video Productions” with the state of Maryland and had a website ready to go live on the day she advised Ms. Daywalt she would no longer be associated with Complainant. On November 18, 2003, Ms. Fisher transferred the ownership of the trade name “LA Millennium Video Productions” to Ms. Daywalt as well as changing the address. As such, Respondent was aware of Complainant’s right to the trade name LA Millennium Video Productions two years prior to the registration of all three disputed domain names.
Even though Complainant has not registered its
trademark with the U.S.P.T.O., possession of a federal registered trademark is
not required in order to prevail under the UDRP – common law rights are
sufficient. Complainant is, however, the
sole owner of a
The predominant portion of the domain names in dispute are virtually identical to the “LA Millennium
Video Productions” mark by using the entire mark or a majority of the mark and
is confusingly similar to such mark.
LA Millennium Video Productions is a well-known name in the video
industry in the
According to Complainant a domain name is, by definition, identical or confusingly similar, when the domain name incorporates Complainant’s mark, thus creating a presumption that the domain name is affiliated with Complainant. Respondent incorporates Complainant’s entire “LA MILLENNIUM VIDEO PRODUCTIONS” mark in one domain name, incorporates three of the four words “LA MILLENNIUM VIDEO” of the mark in another domain name, and incorporates two of the four words “LAMILLENNIUM” of the mark in another domain name, then merely adds the generic top-level domain “.com.” It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
Furthermore Respondent is not associated or known by any of the disputed domain names. Since 2003 Respondent has been doing business as Classic Moments Video Productions and is a close competitor of Complainant in the video production industry. In fact, Respondent’s place of business is only 9 miles from Complainant’s place of business. The WHOIS information lists “Classic Moments Video Production” as the registrant of all three disputed domain names. Respondent has been operating under the name of Classic Moments Video Productions using the domain name <classicmomentsvp.com> and is not commonly known by any of the disputed domain names. The WHOIS contact information for all three of the disputed domain names does not indicate anywhere that Respondent is known by any variation of LA Millennium Video Productions.
Since Complainant became sole owner of the LA
Millennium Video Productions mark, Complainant has spent much time and money
promoting the company and its mark by advertising through the web, magazines,
bridal and careers shows, mailings, brochures, joining organizations,
networking, and other various marketing techniques. In fact, Complainant has recently been
nominated by business associates for best videographer in the
Now, after doing virtually nothing to promote its business for these years, Respondent is attempting to benefit from Complainant’s hard work. Clearly, Respondent is trying to trade upon the goodwill developed by Complainant in the mark “LA MILLENNIUM VIDEO PRODUCTIONS” by using confusingly similar domain names to divert customers to Respondent’s website. Respondent is profiting from all of the advertising and goodwill of Complainant and is infringing on Complainant’s mark. Complainant did not authorize or license Respondent to register a domain name containing any variation of Complainant’s mark. Respondent does not have any rights or legitimate interests in any of the disputed domain names.
On or about September 8, 2006, Complainant discovered that the disputed domain names had been purchased by Respondent and that Internet viewers using these domain names were being redirected to <classicmomentsvp.com>.
A former
client was searching for Complainant in order to refer a friend to its services
and, after typing <lamillenniumvideoproductions.com> in the web
address, was redirected to Respondent’s website
<classicmomentsvp.com>. Confused
about the website, she tried again and was again redirected to
<classicmomentsvp.com>. She then
thought Complainant had gone out of business but had just talked to Ms. Daywalt
not long ago. After researching more on
the internet, she located Complainant.
This diverting of Complainant’s potential clients is misleading and disrupting Complainant’s business. Respondent is using all three of the disputed domain names to forward Internet users to its own website at <classicmomentsvp.com>, which offers video services in direct competition with Complainant. As a result Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under the policy.
Respondent is taking advantage of the confusing similarity between the domain names at dispute and Complainant’s LA MILLENNIUM VIDEO PRODUCTIONS mark for commercial gain, which constitutes bad faith registration and use under Policy ¶ 4(a)(iv).
Immediately upon Complainant’s discovery of Respondents practices, Complainant contacted its attorney, and on September 18, 2006, Complainant’s attorney sent a cease and desist letter to Respondent. Upon receiving the letter, Respondent left a short voicemail message with Complainant’s attorney advising “I was the previous owner and also had the trade name and co-founder of LA Millennium Video Production. This is mentioned on my website on one page and that is giving reference. I will not change that page. The names were for sale and I purchased those names.”
Respondent purchased all three disputed domain names on October 5, 2005, two years after Respondent ended its relationship with Complainant. Respondent has not been affiliated for the last three years in any way whatsoever with Complainant’s company or mark and was not commonly known as LA Millennium Video Productions or any variation of the name. If Respondent felt it was known for the mark, Respondent would not have started operating under another trade name, would not have transferred the mark to Complainant, or would not have waited two entire years to purchase domain names which infringe on the Complainant’s mark to redirect Complainant’s potential clients to Respondent’s new company’s website <classicmomentsvp.com>. Respondent is attempting to benefit from the Complainant’s time and monies expended in advertising and marketing by using all three of the disputed domain names to redirect Internet users, who are searching for Complainant’s products and services, to Respondent’s <classicmomentsvp.com> domain name where Respondent advises she started out as the “original owner and co-founder of LA Millennium Video Productions (LAMVP)” and offers video products and services in direct competition with Complainant.
This diversion creates great confusion among anyone seeking to find Complainant and could very easily cause them to think that Complainant no longer exists causing Complainant’s potential clients to seek the services of the company they had been redirected to which is “Classic Moments Video Productions.”
In the instant case, Respondent has registered and is using all three of the disputed domain names in order to disrupt Complainant’s business by redirecting potential clients to a competitor’s website in violation of Policy ¶4(c)(c)(iii).
Respondent’s continued use of the domain names at dispute that are identical to or a variation of Complainant’s mark could only cause confusion with respect to the source of Respondent’s website with respect to those looking for Complainant, at least at the time the Internet user actually uses the domain name (by entering the domain name and clicking to it) for the purpose of commercial gain of Respondent.
Respondent stated the following response:
1. “The
Complainant and I decided to go into business together. Complainant did
not have the financial means or the equipment to start the business. To have a business bank account, I needed to
have a Maryland Registered Trade name.
Since the Complainant wasn’t providing financial backing, I registered
the business as sole proprietor and took $2k from my own personal funds to
front the business. At the conception
of the business, I was the only one who provided material assets (i.e. editing
computer with software, editing experience and professional camera etc.). I also took out a business loan to purchase
more professional equipment, website development and office supply items to
give the business a professional edge.
Complainant was also employed full-time at a regular job. The Complainant at that time did not know how
to edit and we both were inexperienced in professional style shooting. The Complainant did come up with name “LA
Millennium Video Productions” because the L stood for Lisa (respondent) and the
A stood for Alicia (Complainant).
Complainant was well aware of everything I did regarding the business
and I did nothing without her full knowledge or discussion. Complaint was my subcontractor for 3-years
and received a 1099.
2.
When I owned LA
Millennium Video Productions, I did 50% of the shooting, 99% of the editing and
90% administrative duties (i.e. final contracts, drafting letters, website
management, etc.). The Complainant met
with clients and definitely was a go-getter in establishing jobs. In the beginning with both shot together and
then I edited it. Soon we became
extremely popular mostly due to my editing and we were getting booked without
Complainant having to meet with clients.
The balance of work drastically shifted and the division of funds was
unfair. When this was brought to the
Complainant’s attention, she hung up on me and would not consider a fairer
distribution of the funds.
3.
When we parted ways,
all the couples from the weddings we hadn't yet shot were
given the choice to
stay with LA Millennium Video Productions or transfer to Classic Moments Video
Productions. Because of my editing, 14 brides with exception of one
chose to stay with me.
4.
I still get calls from
events I edited many years ago, and refer to LA Millennium
Video Productions on my website. I hold approximately 150+ events that I edited on
hard drive, first generation digital tape and DVD. Clients who have lost or damaged their VHS or
DVD need to find me so I can reproduce their event. The domain names I purchased all point to
just the one page on my website where I reference LA Millennium Video
Productions and that I was co-founder.
This was not meant to confuse clients or solicit business from LA
Millennium Video Productions, in fact, having LA
Millennium Video Productions on my website gives potential clients an option to
look up complainant’s business.
5. I have purchased numerous domain names which can be verified with Network Solutions. Many are variations of Classic Moments and/or my name.
6. Annex 10 to the Complaint is a bride we had in July 27, 2002, Jennifer Murphy-Novak. This is a personal friend of the Complainant and they socialized frequently. Without a doubt this was a letter drafted as a favor for the Complainant.
7.
My starting fee is $3750 for 6-hours of
coverage. I limit the amount of events I shoot a year to about 15 and I
also do outside freelance editing. I have no desire to steal or
take work from LA Millennium Video Productions, I have more then enough work to
keep me busy. However, as I stated earlier, I was the owner and editor of
LA Millennium Video Productions from its conception and past clients needed to
be able to find me.”
FINDINGS
The Panel finds that:
1.
The
Domain Names <lamillennium.com>, <lamillenniumvideo.com> and
<lamillenniumvideoproductions.com> are confusingly similar to the Complainant’s
mark.
2.
Respondent
has not established any rights or legitimate interests in the Domain Names <lamillennium.com>, <lamillenniumvideo.com> and
<lamillenniumvideoproductions.com> and
3.
Respondent
has registered and is using the Domain Names <lamillennium.com>, <lamillenniumvideo.com> and
<lamillenniumvideoproductions.com> in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted 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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant concedes that it
does not hold a federal trademark registration for the LA MILLENNIUM, LA
MILLENNIUM VIDEO, or LA MILLENNIUM VIDEO PRODUCTIONS marks, only that it has
registered the LA MILLENNIUM VIDEO PRODUCTIONS trade name with the Maryland
Secretary of State’s office.
Nevertheless, the Panel finds that Complainant can establish rights in
the mark through common law rights and that ownership of a trademark
registration in the mark is not required for purposes of Policy ¶ 4(a)(i). See British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist).
Complainant alleges that it
formed a business under the LA MILLENNIUM VIDEO PRODUCTIONS mark in 2001 with
the owner of Respondent’s business, Lisa Fisher. Complainant alleges that it has continuously
used the LA MILLENNIUM VIDEO PRODUCTIONS mark since then in association with
its video company and that it operates a website at the <lamvp.com>
domain name. The Panel further finds
that Complainant has submitted sufficient evidence to show that its LA
MILLENNIUM VIDEO PRODUCTIONS mark has acquired secondary meaning in association
with its video services, in which case Complainant has established common law
rights in the mark according to Policy ¶ 4(a)(i). See Enfinger Dev., Inc. v. Montgomery,
FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had
common law rights in the McMULLEN COVE mark because the complainant provided
sufficient evidence that the mark had acquired secondary meaning, including
development plans, correspondence with government officials, and newspaper
articles featuring the mark); see also Kahn Dev. Co. v. RealtyPROshop.com,
FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s
VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers
sufficient to establish common law rights where the complainant had been
continuously and extensively promoting a real estate development under the mark
for several years).
The Panel further finds that the
<lamillenniumvideoproductions.com> domain name is identical to
Complainant’s LA MILLENNIUM VIDEO PRODUCTIONS mark pursuant to Policy ¶ 4(a)(i)
because the mere elimination of the spaces between terms and addition of the
generic top-level domain “.com” are not distinguishing differences. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Croat. Airlines v. Kwen Kijong,
AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES
trademark).
With respect to the <lamillennium.com>
and <lamillenniumvideo.com> domain names, the Panel finally finds
that Respondent has failed to sufficiently distinguish both domain names from
the LA MILLENNIUM VIDEO PRODUCTIONS mark by simply deleting terms from the mark
and leaving the predominant portion of the mark, “LA Millennium,” intact, thus
rendering the disputed domain names confusingly similar to the mark under
Policy ¶ 4(a)(i).
See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Wellness
Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16,
2001) (finding that the domain name <wellness-international.com> is
confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. Int’l Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Complainant alleges that
Respondent is not commonly known by the disputed domain names, because
Respondent is a former business partner of Complainant that has formed a
competing business under the name “Classic Moments Video Production,” which is
listed as the registrant of the disputed domain names in the WHOIS
database. Complainant also argues that
it has not authorized or licensed Respondent to register or use a domain name
incorporating any variation of Complainant’s LA MILLENNIUM VIDEO PRODUCTIONS
mark. The Panel agrees that Respondent
is not commonly known by the disputed domain names, and holds that Respondent
does not have rights or legitimate interests in the disputed domain names
according to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record); see also Coppertown
Drive-Thru Systems, LLC v. Snowden, FA
715089 (Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Complainant claims that Respondent is using the disputed
domain names to redirect Internet users to Respondent’s own website at the <classicmomentsvp.com> domain name, where it offers video
production services that compete with Complainant’s own services in the same
market areas. The Panel concludes
that Respondent’s use of the disputed domain name to divert Internet users to
its own website where it offers services competing with Complainant for its own
commercial gain is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Velv, LLC v. AAE, FA 677922 (Nat.
Arb. Forum May 25, 2006) (find that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see also
MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006)
(holding that the respondent registered and used the <myspacebot.com>
domain name in bad faith by diverting Internet users seeking the complainant’s
website to its own website for commercial gain because the respondent likely
profited from this diversion scheme).
Complainant also claims that
Respondent worked for Complainant and registered the disputed domain names over
two years after leaving Complainant’s employment. The Panel finds that Respondent’s status as a
former employee of Complainant does not give Respondent rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000)
(finding that a former employee does not acquire rights or legitimate interests
in a domain name identical to the former employer's trademark); see also Sci., Eng’g & Tech. Assocs.
Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding
that the respondent, the Chief Financial Officer of the complainant, did not
have rights or legitimate interests in the domain name containing the
complainant’s mark).
Complainant claims that
Respondent is diverting Internet users seeking Complainant’s video production
services to its own website at the <classicmomentsvp.com> domain name for
commercial gain because Respondent is offering video production services at its
website that compete with Complainant.
Complainant alleges that several of its customers have been mistakenly
diverted to Respondent’s competing website and were confused as to the
affiliation Respondent’s website had with Complainant. The Panel holds that Respondent is taking
advantage of the confusing similarity between Complainant’s LA MILLENNIUM VIDEO
PRODUCTIONS mark and the disputed domain names in order to profit from the
goodwill associated with the mark and that this provides evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see
also Am. Online, Inc. v.
Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
bad faith where the respondent registered and used a domain name confusingly
similar to the complainant’s mark to attract users to a website sponsored by
the respondent).
Furthermore, the Panel finds that because Respondent is a competitor of
Complainant and operates in the same market area, Respondent is using the
disputed domain names for the primary purpose of disrupting Complainant’s
business pursuant to Policy ¶ 4(b)(iii) by having the
disputed domain names resolve to its own website offering competing video
production services. See
The Panel also finds that Respondent’s registration of the disputed
domain names two years after leaving Complainant’s employment provides further
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DINOFLEX Mfg. Ltd.
v. Recreational Tech. Indus. Ltd., FA 292846 (Nat. Arb. Forum Aug.
17, 2004) (“The Panel
finds that Respondent registered and used the Disputed Domain Name in bad faith
since Respondent wilfully registered the name despite its knowledge of
Complainant’s rights in the PLAYTILES mark, which can be inferred from the
involvement of Mr. Damberg in the industry and as a past or current employee of
Complainant and Respondent respectively.”); see also William Hill Org. Ltd. v. Fulfillment Mgmt.
Servs. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration
and use where “[R]espondent’s employee must have had the Complainant’s trade
marks in mind when choosing the disputed domain name and that the respondent‘s
interest was to deprive the complainant of the opportunity to reflect its mark
in that name until the registration expires”).
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 <lamillennium.com>, <lamillenniumvideo.com> and <lamillenniumvideoproductions.com>
domain names be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: January 12, 2007
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