The Toronto-Dominion Bank v. Shi Lei / shi lei
Claim Number: FA1712001761568
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Shi Lei / shi lei (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcardreward.com>, <tdcarrewards.com>, <tdcardrewrds.com>, <tdcardrewars.com>, <tdcardrewads.com>, <tdcardreards.com>, <wwwtdcardrewards.com>, <tdtotalreward.com>, <wwwntdconnect.com>, and <tdbankpenyarcadesettlement.com>, registered with Hichina Zhicheng Technology Ltd.; <tdcardreward.xyz>, <tdcarrewards.xyz>, <tdcardrewrds.xyz>, <tdcardrewars.xyz>, <tdcardrewads.xyz>, <tdcardreards.xyz>, <wwwtdcardrewards.xyz>, <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, and <wwwntdconnect.xyz>, registered with Alibaba Cloud Computing Ltd. d/b/a Hichina (www.net.cn); and <tdwrewards.com>, registered with NameSilo, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2017; the Forum received payment on December 6, 2017.
On December 7, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <tdwrewards.com> domain name is registered with NameSilo, LLC, and that Respondent is the current registrant of the name. On December 11, 2017, Alibaba Cloud Computing Ltd. d/b/a Hichina (www.net.cn) and Hichina Zhicheng Technology Ltd. confirmed by e-mail to the Forum that the <tdcardreward.com>, <tdcarrewards.com>, <tdcardrewrds.com>, <tdcardrewars.com>, <tdcardrewads.com>, <tdcardreards.com>, <wwwtdcardrewards.com>, <tdtotalreward.com>, <tdcardreward.xyz>, <tdcarrewards.xyz>, <tdcardrewrds.xyz>, <tdcardrewars.xyz>, <tdcardrewads.xyz>, <tdcardreards.xyz>, and <wwwtdcardrewards.xyz> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a Hichina (www.net.cn) and Hichina Zhicheng Technology Ltd., and that Respondent is the current registrant of the names. On December 19, 2017, Alibaba Cloud Computing Ltd. d/b/a Hichina (www.net.cn) and Hichina Zhicheng Technology Ltd. confirmed by e-mail to the Forum that the <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, <wwwntdconnect.com>, <wwwntdconnect.xyz>, and <tdbankpenyarcadesettlement.com> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a Hichina (www.net.cn) and Hichina Zhicheng Technology Ltd., and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a Hichina (www.net.cn), NameSilo, LLC, and Hichina Zhicheng Technology Ltd. have verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a Hichina (www.net.cn), NameSilo, LLC, and Hichina Zhicheng Technology Ltd. registration agreement and have, thereby, agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tdcardreward.com, postmaster@tdcardreward.xyz, postmaster@tdcarrewards.com, postmaster@tdcarrewards.xyz, postmaster@tdcardrewrds.com, postmaster@tdcardrewrds.xyz, postmaster@tdcardrewars.com, postmaster@tdcardrewars.xyz, postmaster@tdcardrewads.com, postmaster@tdcardrewads.xyz, postmaster@tdcardreards.com, postmaster@tdcardreards.xyz, postmaster@wwwtdcardrewards.com, postmaster@wwwtdcardrewards.xyz, postmaster@tdtotalreward.com, postmaster@tdwrewards.com, postmaster@tdhloanonline.xyz, postmaster@tdiautofinace.xyz, postmaster@tdloanonline.xyz, postmaster@wwwntdconnect.com, postmaster@wwwntdconnect.xyz, postmaster@tdbankpenyarcadesettlement.com. Also on December 28, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant provides banking and financial services throughout North America. Complainant uses the TD and TD BANK marks (“TD marks”) in conjunction with its business practices. Complainant registered the TD marks with the Canadian Intellectual Property Office (“CIPO”) (e.g., TD mark: Reg. No. 0681476, registered May 3, 1991; TD BANK mark: Reg. No. TMA549396, registered Aug. 7, 2001). See Compl. Ex. A. Additionally, Complainant registered the TD marks with the United States Patent and Trademark Office (“USPTO”) (e.g., TD mark: Reg. No. 1,649,009, registered June 25, 1991; TD BANK mark: Reg. No. 3,788,055, registered May 11, 2010). Id.
Respondent’s <tdcardreward.com>, <tdcardreward.xyz>, <tdcarrewards.com>, <tdcarrewards.xyz>, <tdcardrewrds.com>, <tdcardrewrds.xyz>, <tdcardrewars.com>, <tdcardrewars.xyz>, <tdcardrewads.com>, <tdcardrewads.xyz>, <tdcardreards.com>, <tdcardreards.xyz>, <wwwtdcardrewards.com>, <wwwtdcardrewards.xyz>, <tdtotalreward.com>, <tdwrewards.com>, <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, <wwwntdconnect.com>, <wwwntdconnect.xyz>, and <tdbankpenyarcadesettlement.com> are confusingly similar to Complainant’s TD marks. The <tdcardreward.com>, <tdcardreward.xyz>, <tdcarrewards.com>, <tdcarrewards.xyz>, <tdcardrewrds.com>, <tdcardrewrds.xyz>, <tdcardrewars.com>, <tdcardrewars.xyz>, <tdcardrewads.com>, <tdcardrewads.xyz>, <tdcardreards.com>, <tdcardreards.xyz>, <wwwtdcardrewards.com>, <wwwtdcardrewards.xyz>, <tdtotalreward.com>, <tdwrewards.com>, <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, <wwwntdconnect.com>, <wwwntdconnect.xyz> domain names incorporate the TD mark in its entirety, adding generic terms (“card,” “reward(s),” “loan,” “online,” “total,” “auto finance,” “connect”), misspelled variants of the generic terms “card,” “reward(s),” and “finance,” and/or extra letters (“www,” “w,” “h,” “i,” “nt”). The disputed domain names also incorporate the “.com” or “.xyz” generic top level domains (“gTLDs”). Respondent’s <tdbankpenyarcadesettlement.com> is confusingly similar to Complainant’s mark because it incorporates the TD BANK mark in its entirety, adding a misspelled variation of “penny,” the generic terms “arcade” and “settlement,” and the “.com” gTLD. All generic terms are representative of Complainant’s products and services. See Compl. Ex. H.
Respondent does not have rights or legitimate interests in <tdcardreward.com>, <tdcardreward.xyz>, <tdcarrewards.com>, <tdcarrewards.xyz>, <tdcardrewrds.com>, <tdcardrewrds.xyz>, <tdcardrewars.com>, <tdcardrewars.xyz>, <tdcardrewads.com>, <tdcardrewads.xyz>, <tdcardreards.com>, <tdcardreards.xyz>, <wwwtdcardrewards.com>, <wwwtdcardrewards.xyz>, <tdtotalreward.com>, <tdwrewards.com>, <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, <wwwntdconnect.com>, <wwwntdconnect.xyz>, and <tdbankpenyarcadesettlement.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the TD marks in any regard, nor is Respondent affiliated with Complainant. Respondent had not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. Respondent’s domain names resolve to either parked webpages containing links to products in direct competition or unrelated to Complainant, or inactive webpages displaying error messages. See Compl. Ex. F.
Respondent registered <tdcardreward.com>, <tdcardreward.xyz>, <tdcarrewards.com>, <tdcarrewards.xyz>, <tdcardrewrds.com>, <tdcardrewrds.xyz>, <tdcardrewars.com>, <tdcardrewars.xyz>, <tdcardrewads.com>, <tdcardrewads.xyz>, <tdcardreards.com>, <tdcardreards.xyz>, <wwwtdcardrewards.com>, <wwwtdcardrewards.xyz>, <tdtotalreward.com>, <tdwrewards.com>, <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, <wwwntdconnect.com>, <wwwntdconnect.xyz>, and <tdbankpenyarcadesettlement.com> in bad faith. Respondent offered to sell the domain names to Complainant for amounts in excess of out-of-pocket costs. See Compl. Ex. J. Due to the sheer number of disputed domain names infringing on Complainant’s TD marks, Respondent has engaged in a pattern of bad faith registration and use. Respondent’s <tdcardreward.com>, <tdcarrewards.com>, <tdcardrewrds.com>, <tdcardrewars.com>, <tdcardrewads.com>, <tdcardreards.com>, <wwwtdcardrewards.com>, <tdtotalreward.com>, <tdwrewards.com>, <wwwntdconnect.com>, and <tdbankpenyarcadesettlement.com> attract internet users to Respondent’s websites for commercial gain by hosting click-through-links to goods and services in direct competition with or unrelated to Complainant’s business. See Compl. Ex. F. Likewise, Respondent’s <tdcardreward.xyz>, <tdcarrewards.xyz>, <tdcardrewrds.xyz>, <tdcardrewars.xyz>, <tdcardrewads.xyz>, <tdcardreards.xyz>, <wwwtdcardrewards.xyz>, <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, and <wwwntdconnect.xyz> divert internet users to inactive websites with no demonstrable intent of active use. Id. Respondent has engaged in typosquatting, taking advantage of common misspellings in its domain names. Respondent registered the disputed domain names with actual knowledge of Complainant and its rights to the TD marks.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered <wwwntdconnect.com> and <wwwntdconnect.xyz>, on March 16, 2017; <tdtotalreward.com>, on May 11, 2017; <tdbankpenyarcadesettlement.com>, on June 8, 2017; <tdwrewards.com> on September 16, 2017; <tdcardreward.com>, <tdcardreward.xyz>, <tdcarrewards.com>, <tdcarrewards.xyz>, <tdcardrewrds.com>, <tdcardrewrds.xyz>, <tdcardrewars.com>, <tdcardrewars.xyz>, <tdcardrewads.com>, <tdcardrewads.xyz>, <tdcardreards.com>, <tdcardreards.xyz>, <wwwtdcardrewards.com>, and <wwwtdcardrewards.xyz>, on October 14, 2017; <tdhloanonline.xyz> and <tdloanonline.xyz>, on November 5, 2017; and <tdiautofinace.xyz>, on November 7, 2017.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the registrant for all twenty-two of the disputed domain names is “Shi Lei.” See Compl. II.B ¶ 1. WHOIS records associated with this case show that the domain names are registered to either “Shi Lei” or “Nexperian Holding Limited.” See Compl. Ex. E. However, all of the disputed domain names have the same registrant phone number (+86.13655818575), email (fourstone@126.com), and address (“state/province, ‘Zhe Jiang / Shejiang’ and postal code, “311100” as well as nearly identical registrant city: ‘Hang Zhou Shi’ vs. ‘Hangzhou’”). Id. at ¶¶ 2–4. Complainant asserts that “[t]here is overwhelming evidence that Respondent has used these aliases with the bad-faith intent of avoiding responsibility for fraudulently and illegitimately profiting from Complainant’s rights in Complainant’s Marks and it would place an unjustified burden on the Complainant if it were required to initiate separate proceedings.” Compl. II.B.
The Panel finds that Complainant has produced sufficient evidence to indicate all disputed domain names are controlled by the same entity. This proceeding shall continue with one Respondent, Shi Lei, as the entity in control of all disputed domain names herein.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the dispute domain names.
Pursuant to UDRP Rule 11(a), the Panel further finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Paragraph 15(a) of 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 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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain names are each confusingly similar to Complainant’s valid and subsisting trademarks. Complainant has adequately plead its rights and interests in and to these trademarks. Respondent arrives at the disputed domain names by taking Complainant’s marks in their entirety and adding generic words or misspelled words from the banking industry, precisely Complainant’s business, and adding g TLDs such as “.com” or “.xyz.” This is insufficient to distinguish the dispute domain names from Complainant’s trademarks.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks.
Further, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no, authority, permission or license to register the dispute domain names. Respondent is not commonly known by the disputed domain names. Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. In support of its assertion, Complainant demonstrates that Respondent’s domain names resolve to either parked webpages containing links to products in direct competition with or unrelated to Complainant’s business, or inactive webpages displaying error messages. See Compl. Ex. F.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the dispute domain names. Complainant demonstrates that Respondent offered to sell the domain names to Complainant for amounts in excess of out-of-pocket costs. See Compl. Ex. J. Selling disputed domain names for excess out-of-pocket costs evinces bad faith registration. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Due to the sheer number of disputed domain names infringing on Complainant’s TD marks, Complainant asserts that Respondent has engaged in a pattern of bad faith registration and use. The registration of multiple domain names infringing on the rights of a complainant’s mark is indicative of bad faith registration and use. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Next, Complainant contends that Respondent’s <tdcardreward.com>, <tdcarrewards.com>, <tdcardrewrds.com>, <tdcardrewars.com>, <tdcardrewads.com>, <tdcardreards.com>, <wwwtdcardrewards.com>, <tdtotalreward.com>, <tdwrewards.com>, <wwwntdconnect.com>, and <tdbankpenyarcadesettlement.com> attract internet users to Respondent’s websites for commercial gain by hosting click-through-links to goods and services in direct competition with or unrelated to Complainant’s business. Domain names that infringe on the mark of a complainant and direct internet users to third party websites where the respondent presumably receives click-through fees demonstrates bad faith and usage. See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”); Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Likewise, Complainant argues that Respondent’s <tdcardreward.xyz>, <tdcarrewards.xyz>, <tdcardrewrds.xyz>, <tdcardrewars.xyz>, <tdcardrewads.xyz>, <tdcardreards.xyz>, <wwwtdcardrewards.xyz>, <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, and <wwwntdconnect.xyz> divert internet users to inactive websites with no demonstrable intent of active use. “Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015); Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Given the evidence provided, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶¶ 4(b)(i)–(iv).
Additionally, Complainant asserts that Respondent has engaged in typosquatting, taking advantage of common misspellings in its domain names.
“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.” Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016). Capitalizing on common typing errors to divert internet users to a respondent’s infringing website is evidence of typosquatting and bad faith. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). As such, the Panel finds that Respondent has engaged in typosquatting, thereby demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered the disputed domain names with actual knowledge of Complainant and its rights to the TD marks. Given the clear pattern of abuse engaged in by Respondent and the totality of the circumstances, the Panel finds that Respondent had prior actual knowledge of Complainant’s rights and interests in and to its trademarks.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <tdcardreward.com>, <tdcardreward.xyz>, <tdcarrewards.com>, <tdcarrewards.xyz>, <tdcardrewrds.com>, <tdcardrewrds.xyz>, <tdcardrewars.com>, <tdcardrewars.xyz>, <tdcardrewads.com>, <tdcardrewads.xyz>, <tdcardreards.com>, <tdcardreards.xyz>, <wwwtdcardrewards.com>, <wwwtdcardrewards.xyz>, <tdtotalreward.com>, <tdwrewards.com>, <tdhloanonline.xyz>, <tdiautofinace.xyz>, <tdloanonline.xyz>, <wwwntdconnect.com>, <wwwntdconnect.xyz>, and <tdbankpenyarcadesettlement.com> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: January 29, 2018
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