Disney Enterprises, Inc. and
ESPN, Inc. v. Kanter Associates SA c/o Admin
Claim Number: FA0911001293417
PARTIES
Complainant is Disney Enterprises, Inc. and ESPN, Inc. (“Complainant”), represented by J.
Andrew Coombs of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clubepnguin.com>, <babybambi.com>,
<babyeintstein.com>, <carsthevideogames.com>, <cheetahagirls.com>, <cheetahgirlsmovie.com>, <cheetahgirlstwo.com>, <cheetergirls.com>, <cinderala.com>, <cinderalla3.com>, <cindrella3.com>, <clubpanguins.com>, <clubpeingiun.com>, <clubpengnin.com>, <clubpenguinpasswords.com>, <dianeymovieclub.com>, <diisneilatino.com>, <disnary.com>, <disnev.com>, <disneycakes.com>, <disneysanimalkingdom.com>, <epspn.com>, <haighscoolmusical.com>, <hannahmontanaconcerts.com>,
<hannahmontanashop.com>, <hannahmontanamusicvideos.com>, <higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, <highskoolmusical.com>, <mundodedisny.com>, <musicahighschoolmusical.com>, <playhawsdisne.com>, <playhousdisne.com>, <playhousediisney.com>, <playhousedinseychannel.com>, <thatsoravan.com>, <thatssoravon.com>, and <videoshighschoolmusical.com>,
registered with Fabulous.com Pty Ltd.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically
On
On
The Forum received a timely Response and determined it to be complete
No Additional Submissions or Additional Responses were submitted.
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1. Respondent registered a series of domain
names containing Complainant’s protected marks.
2. Respondent
has no rights to or legitimate interests in the domain names containing
Complainant’s protected marks.
3. Respondent registered and
used the disputed domain names in bad faith.
B. Respondent makes the following points in response:
1. Respondent acquired the domain names “in a
large portfolio, pursuant to written agreement.”
2. Respondent asserts that the agreement
“contained warranties and representations by the seller stating that the domain
names were not in violation of the intellectual property rights of any third
party.”
3. Respondent contacted Complainant after
receipt of the Complaint and offered “to resolve the matter by a voluntary
transfer of the Domain Names, without charge or condition.”
4. Respondent offers to transfer the domain
names in this proceeding so long as “further findings” are not made.
5. Respondent denies bad faith.
C. The parties filed no Additional Submissions.
Preliminary Issue #1:
Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states: “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines: “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Two Complainants are identified in this matter: Disney Enterprises, Inc., and ESPN, Inc. Disney is the parent company of American Broadcasting Companies, Inc. (“ABC”), which owns 80% of ESPN, Inc.
Previous panels have interpreted
the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one
party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010
Olympic and Paralymic Games and International Olympic Committee v. Hardeep
Malik, FA 666119 (Nat. Arb. Forum
It has been accepted that it is permissible for
two complainants to submit a single complaint if they can demonstrate a link between
the two entities such as a relationship involving a license, a partnership or
an affiliation that would establish the reason for the parties bringing the
complaint as one entity.
In Tasty Baking,
The Panel finds that the evidence submitted with the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and finds it appropriate to treat them as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Preliminary Issue #2:
Consent to Transfer
Respondent
explicitly consents to transfer the disputed domain names to the Complainant; however, after
the initiation of this proceeding, the registrar, Compana LLC, placed a hold on Respondent’s account and as a result
Respondent cannot transfer the disputed domain names while this proceeding is
still pending.
The Panel finds that absent other circumstances,
where Respondent has not contested the transfer of the disputed domain names,
but instead agrees to transfer the domain names in question to Complainant, the
Panel may decide to forego the traditional UDRP analysis and order an immediate
transfer of the disputed domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd.
– Cayman Web Dev., FA
133625 (Nat. Arb. Forum
It
appears to this Panel that on
The Panel also finds that the “consent-to-transfer” approach is but one
way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v.
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain names deserves to be along with the findings in accordance with the Policy.
FINDINGS
The Complainant demonstrated confusing similarity and legal rights in
the marks contained within each of the disputed domain names except the <babyeintstein.com>
domain name.
Based on the circumstances here, Complainant also
established confusing similarity to the <babyeintstein.com>
disputed domain name and probably
also could show legal rights to, or at least common law rights to and
legitimate interests in the <babyeintstein.com>
domain name.
Moreover, the <babyeintstein.com>
domain name is sufficiently well known to a generation of parents such that
Respondent would have had constructive notice of another’s rights and interests
to the mark contained within the <babyeintstein.com>
disputed domain name.
Respondent purchased all of the disputed domain names on a later date
but the date of registration as to each controls.
Respondent denies knowledge that a third party may have had an interest
in each of the disputed domain names, yet the disputed domain names are so closely
identified to well-known properties that Complainant produces and markets in
the entertainment industry that Respondent knew or was on constructive notice
of another’s rights in the marks contained within each of the disputed domain
name.
The disputed domain names each appears on its face to be a typosquatted
misspelling of Complainant’s well known marks and properties.
Typosquatting supports findings that Respondent acted in bad faith in
registering and using each of the disputed domain names.
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 Complainant to 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) 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 established rights in
BAMBI (Reg. No. 2,889,386 issued
Complainant also contends that it has
established rights in the CLUB
PENGUIN, DISNEY, and PLAYHOUSE DISNEY marks.
Complainant submitted evidence of registration of the CLUB PENGUIN (Reg.
No. 1,151,975 issued
Additionally, the Panel finds that
registration in Respondent’s primary country of doing business is not necessary
to establish rights in the marks under Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO
The Panel further finds that
Complainant’s rights in the marks under Policy ¶ 4(a)(i)
date back to the date the application was filed with the federal trademark
authority that subsequently granted the registration. See Hershey
Complainant also contends that it
has established rights in the ESPN and THAT’S SO RAVEN marks, but did not
submit evidence of registration of these marks with a federal trademark
authority. The Panel finds that
registration of the marks with a governmental trademark authority is not
necessary for Complainant to establish rights in the mark pursuant to Policy ¶
4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO
Complainant states that ESPN is the
largest sports cable network in the
Complainant also claims rights in
the THAT’S SO RAVEN mark under Policy ¶ 4(a)(i). Complainant submitted proof of a copyright
registration for the THAT’S SO RAVEN mark with the United States Copyright
Office (Reg. No. PA 1-609-098 eff. date
As a preliminary matter, the
disputed domain names all include the generic top-level domain (“gTLD”)
“.com.” The Panel finds that addition of
a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum
The following paragraphs divide the forty-one disputed domain names into groups based on Complainant’s marks, ignoring the gTLD “.com” that was added to each disputed domain name.
Complainant contends that the <clubepnguin.com>, <clubpanguins.com>,
<clubpeingiun.com>, <clubpengnin.com>, and <clubpenguinpasswords.com> domain
names are confusingly similar to its CLUB PENGUIN mark. The <clubepnguin.com>, <clubpanguins.com>,
<clubpeingiun.com>, and <clubpengnin.com> domain names are
various misspellings of Complainant’s CLUB PENGUIN mark. See Bond &
Co. Jewelers, Inc. v.
The <babybambi.com>
domain name inserts the generic word “baby” in front of Complainant’s BAMBI
mark. The Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co, supra.; see also AOL LLC v. AIM Profiles, FA
964479 (Nat. Arb. Forum
Complainant contends that the <carsthevideogames.com> domain name is confusingly similar to
its CARS mark. The disputed domain name contains
Complainant’s mark along with the generic phrase “the video games.” The Panel finds that the <carsthevideogames.com> domain name is confusingly
similar to Complainant’s CARS
mark under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb.
Forum
The <cheetahagirls.com>,
<cheetahgirlsmovie.com>, <cheetahgirlstwo.com>, and <cheetergirls.com> domain names
incorporate Complainant’s THE CHEETAH GIRLS mark. These four disputed domain names omit the
article “the” that is present in the mark and omit the spaces from the
mark. Previous Panels have found that
omission of an article and space fails to sufficiently distinguish the domain
name from the mark pursuant to Policy ¶ 4(a)(i). See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum
The <cinderala.com>,
<cinderalla3.com>, and <cindrella3.com> domain names
incorporate Complainant’s CINDERELLA mark. The Panel finds that the <cinderala.com> and <cinderalla3.com> domain names misspell Complainant’s CINDERELLA
mark in a way that makes the pronunciation identical to the mark. See
YAHOO! Inc. v. Murray, D2000-1013 (WIPO
Respondent’s <dianeymovieclub.com>,
<diisneilatino.com>, <disnary.com>, <disnev.com>, <disneycakes.com>, and <mundodedisny.com> domain names
incorporate Complainant’s DISNEY
mark. The <dianeymovieclub.com>, <diisneilatino.com>,
<disnary.com>, <disnev.com>, and <mundodedisny.com> domain names
utilize various misspellings of Complainant’s DISNEY mark. Previous Panels have found that misspellings
such as these create confusing similarity under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, supra; see also Ty, Inc. v. O.Z. Names, supra; see also Barnes & Noble College Bookstores, Inc. v. Leasure
Interactive, supra; see also YAHOO! Inc. v. Murray, supra. The <dianeymovieclub.com>, <diisneilatino.com>, <disneycakes.com>,
and <mundodedisny.com> domain
names add generic words to Complainant’s DISNEY mark. Previous Panels
have found that adding generic words to a mark creates confusing similarity
under Policy ¶ 4(a)(i). See
AOL LLC v. AIM Profiles, supra; see also Warner Bros. Entm’t Inc. v. Sadler,
supra. Therefore the Panel finds that the <dianeymovieclub.com>, <diisneilatino.com>,
<disnary.com>, <disnev.com>, <disneycakes.com>, and <mundodedisny.com> domain names
are confusingly similar to Complainant’s DISNEY mark under Policy ¶ 4(a)(i).
The <disneysanimalkingdom.com>
domain name incorporates Complainant’s DISNEY'S ANIMAL KINGDOM mark,
omitting the spaces and the apostrophe.
The Panel finds these changes insufficient to create distinctiveness
under Policy ¶ 4(a)(i). See
LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA
203944 (Nat. Arb. Forum
The <epspn.com>
domain name mispells Complainant’s ESPN
mark by adding the letter “p.” The Panel
finds that the <epspn.com> domain name is
confusingly similar to Complainant’s ESPN mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org,
supra; see also Ty, Inc. v. O.Z. Names, supra.
The <haighscoolmusical.com>,
<higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, <highskoolmusical.com>, <musicahighschoolmusical.com>,
and <videoshighschoolmusical.com>
domain names incorporate Complainant’s HIGH SCHOOL MUSICAL mark. The <haighscoolmusical.com>, <higeschoolmusical.com>, <highschoolmsical.com>,
<highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, and <highskoolmusical.com>
domain names all are comprised of a misspelling of the mark. The Panel finds that the <haighscoolmusical.com>, <higeschoolmusical.com>, <highschoolmsical.com>,
<highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, and <highskoolmusical.com> domain
names are confusingly similar to Complainat’s HIGH SCHOOL MUSICAL mark
under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Triple E Holdings Ltd.,
FA 281584 (Nat. Arb. Forum
Respondent’s <hannahmontanaconcerts.com>,
<hannahmontanashop.com>, and <hannahmontanamusicvideos.com>
domain names include Complainant’s HANNAH MONTANA mark with the spaces
removed and generic words added. The
Panel finds that theses three disputed domain names are confusingly similar to
Complainant’s HANNAH MONTANA mark under Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
The <playhawsdisne.com>,
<playhousdisne.com>, <playhousediisney.com>, and <playhousedinseychannel.com>
domain names all incorporate misspellings of Complainant’s PLAYHOUSE DISNEY mark with the space
omitted. The <playhousedinseychannel.com> domain name also adds the generic word “channel” to
the mark. The Panel finds that these
four disputed domain names are confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v.
Respondent’s <thatsoravan.com>
and <thatssoravon.com> domain
names incorporate a misspelled version of Complainant’s THAT’S SO RAVEN
mark. The Panel finds that the
misspelling and omission of periods creates a confusing similarity under Policy
¶ 4(a)(i). See Bond & Co.
Jewelers, Inc. v.
Complainant requests the transfer of the <babyeintstein.com> domain
name. The marks Complainant mentions
having rights in are the BAMBI, CARS, CINDERELLA, DISNEY'S ANIMAL
KINGDOM, HANNAH MONTANA, HIGH SCHOOL MUSICAL, THE CHEETAH GIRLS, CLUB PENGUIN, DISNEY, PLAYHOUSE DISNEY, ESPN,
and THAT’S SO RAVEN marks. The Panel finds that the Baby Einstein
productions are such a well-known purchase by Complainants and that much publicity
has been generated as to claimed educational value for infants and the lack
thereof that an acquirer of domain names would have been on constructive notice
of any domain name containing Baby and Einstein in combination. The Panel finds
that the Complainant’s acquisition and development of the brand is so well
known that common law rights would probably result with a proper showing. However, Complainant
did not make that showing in this application and did not base its rights under
Policy ¶ 4(a)(i) on a claim of common law acquisition. Complainant failed to make a showing to establish rights
in a mark for which the <babyeintstein.com> domain name would be confusingly similar. See Creative Curb v.
Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum
The
Panel is aware that Respondent made no argument under Policy ¶ 4(a)(i) for the
<babyeintstein.com> domain name and that
Respondent offered to transfer the name.
The Panel ruled that because Complainant had not consented to the
transfer that a decision on the merits would be made. The Panel finds that as to the <babyeintstein.com> domain name,
Complainant did not meet its primary burden of showing rights in the disputed
domain name and Complainant may not prevail on its request to transfer that
domain name.
The Panel finds as to the remaining forty domain names
at issue, Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Except as to the <babyeintstein.com> Complainant made
a prima facie case showing rights to or legitimate interests in the
disputed domain names as well as showing that Respondent lacks such rights to and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Once Complainant does so, then
the burden of proof shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum
The WHOIS information associated with the disputed domain names identifies the registrant as “Kanter Associates SA c/o Admin.” The Panel finds that Respondent is not
commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum
Complainant contends that Respondent is
using the disputed domain names to resolve to pay-per-click advertising websites displaying links to
third parties, some of whom are Complainant’s direct competitors. The Panel finds that this is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid,
D2002-1085 (WIPO
Typosquatting occurs
when a respondent purposefully includes typographical errors in a domain name
to divert Internet users who commit the typographical error the particular
domain name takes advantage of. The
Panel finds that most of the disputed domain names here take advantage of common mistakes by Internet
users who mistype a Complainant’s marks.
The Panel therefore finds that Respondent has engaged in typosquatting
and that such typosquatting is further evidence that Respondent does not have
rights to or legitimate interests in any of the disputed domain names pursuant
to Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
Respondent makes no arguments under Policy ¶ 4(a)(ii).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii) as to each of
the disputed domain names except <babyeintstein.com>.
Registration and Use in Bad Faith
Respondent registered the disputed domain names on the following dates:
Domain
Name |
Registration
Date |
<clubepnguin.com> |
|
<babybambi.com> |
|
<babyeintstein.com> |
|
<carsthevideogames.com> |
|
<cheetahagirls.com> |
|
<cheetahgirlsmovie.com> |
|
<cheetahgirlstwo.com> |
|
<cheetergirls.com> |
|
<cinderala.com> |
|
<cinderalla3.com> |
|
<cindrella3.com> |
|
<clubpanguins.com> |
|
<clubpeingiun.com> |
|
<clubpengnin.com> |
|
<clubpenguinpasswords.com> |
|
<dianeymovieclub.com> |
|
<diisneilatino.com> |
|
<disnary.com> |
|
<disnev.com> |
|
<disneycakes.com> |
|
<disneysanimalkingdom.com> |
|
<epspn.com> |
|
<haighscoolmusical.com> |
|
<hannahmontanaconcerts.com> |
|
<hannahmontanashop.com> |
|
<hannahmontanamusicvideos.com> |
|
<higeschoolmusical.com> |
|
<highschoolmsical.com> |
|
<highschoolmuical.com> |
|
<highschoolmusicel.com> |
|
<highshoolmusical.com> |
|
<highskoolmusical.com> |
|
<mundodedisny.com> |
|
<musicahighschoolmusical.com> |
|
<playhawsdisne.com> |
|
<playhousdisne.com> |
|
<playhousediisney.com> |
|
<playhousedinseychannel.com> |
|
<thatsoravan.com> |
|
<thatssoravon.com> |
|
<videoshighschoolmusical.com> |
|
Complainant asserts that Respondent
is using the disputed
domain names to resolve
to websites that contain links for third-party websites, some of which directly
compete with Complainant. The Panel finds
that Respondent is using the disputed domain names,
which are confusingly similar to Complainant’s marks, to divert Internet
users to Complainant’s competitors and thereby disrupt Complainant’s business
and that this constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO
According to Complainant, the
websites that resolve from the disputed domain
names display advertisements and links to websites that are both related
and unrelated to Complainant’s business and associated marks. Complainant contends that Respondent receives
pay-per-click fees for these links and advertisements. The Panel finds that Respondent is taking
advantage of the inherent confusion between the disputed domain names and
Complainant’s marks for Respondent’s own financial gain, conduct that supports
findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Furthermore, the Panel finds that
Respondent engaged in typosquatting with respect to some or all of the disputed
domain names, and also finds that this evidence supports findings that Respondent
registered and is using these disputed domain names in bad faith pursuant to Policy
¶ 4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO
Respondent makes no arguments under ICANN Policy ¶ 4(a)(iii).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii) as to each of the disputed domain names except <babyeintstein.com>.
DECISION
Complainant’s having failed to establish rights in the < babyeintstein.com>
disputed domain name, the Panel concludes that relief shall
be DENIED without
prejudice to refilling as to the <babyeintstein.com> domain name.
Accordingly, it is Ordered that the <babyeintstein.com> NOT be transferred at this time.
Complainant’s having satisfied the three elements
of ICANN Policy ¶ 4(a) as to each
of the remaining disputed domain names, the Panel concludes that the relief
Complainant requests shall be GRANTED as to the following
domain names and, accordingly, it is ORDERED that
the disputed domain names <clubepnguin.com>,
<babybambi.com>, <carsthevideogames.com>, <cheetahagirls.com>, <cheetahgirlsmovie.com>, <cheetahgirlstwo.com>, <cheetergirls.com>, <cinderala.com>, <cinderalla3.com>, <cindrella3.com>, <clubpanguins.com>, <clubpeingiun.com>, <clubpengnin.com>, <clubpenguinpasswords.com>, <dianeymovieclub.com>, <diisneilatino.com>, <disnary.com>, <disnev.com>, <disneycakes.com>, <disneysanimalkingdom.com>, <epspn.com>, <haighscoolmusical.com>, <hannahmontanaconcerts.com>,
<hannahmontanashop.com>, <hannahmontanamusicvideos.com>, <higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, <highskoolmusical.com>, <mundodedisny.com>, <musicahighschoolmusical.com>, <playhawsdisne.com>, <playhousdisne.com>, <playhousediisney.com>, <playhousedinseychannel.com>, <thatsoravan.com>, <thatssoravon.com>, and <videoshighschoolmusical.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated:
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