The Trustees of the Trust Number SR-1 v.
Turnberry, Scotland Golf and Leisure c/o International Languages
Claim Number: FA0208000122224
PARTIES
Complainant
is The Trustees of the Trust, Number
SR-1, Aventura, Florida, USA represented by David A Gast Esq., of Malloy
& Malloy PA, Miami, Florida.
Respondent is Turnberry, Scotland
Golf and Leisure, c/o International Languages, Inc.,Toronto, Ontario,
CANADA represented by Brian D. Albert
Esq., of Law Offices of Brian D.
Albert, PA, Miami, Florida.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <turnberryonthegreen.com>
and <turnberry-on-the-green.com>, registered with Tucows, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Alan
L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 23, 2002; the Forum received a hard copy of the
Complaint on August 22, 2002.
On
September 11, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the
domain names <turnberryonthegreen.com>
and <turnberry-on-the-green.com> are registered with Tucows,
Inc. and that the Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is
bound by the Tucows, 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
September 11, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 1, 2002 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, to postmaster@turnberryonthegreen.com and to postmaster@turnberry-on-the-green.com
by e-mail.
A
timely Response was received and determined to be complete on October 7, 2002.
Complainant
filed a Reply and Additional Submission dated October 11, 2002. Respondent
filed an Additional Response dated 15 October
2002. Complainant filed a “Sur-Reply”
dated October 16, 2002. Respondent
filed a “Response to Sur-Reply” dated October 20, 2002. All of these
submissions were unsolicited by the Panel.
On October 23, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Alan L. Limbury
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a Florida trust, composed of Donald Soffer and Bernard Redlich, doing
business under the name Turnberry Associates as a real estate developer and
property manager. It was founded more than 40 years ago. It has developed
shopping malls, residential developments, hotels and resorts across the United
States. In particular, it has developed several projects bearing names
incorporating the name Turnberry, including One Turnberry Place; Turnberry
Plaza; Two Turnberry Place and Turnberry Isle Resort and Country Club (all of
which are located in Aventura, Florida) and Turnberry Place/Stirling Club in
Las Vegas. Projects under way include Turnberry Ocean Colony at Sunny Isles
Beach, Florida, Turnberry Village and Turnberry On The Green, both at Aventura,
Florida.
The
Turnberry On The Green development, due to open in December 2002, overlooks the
golf course of the Turnberry Isle Resort and Country Club. It offers for rental
apartment homes, penthouses and tower suites with floor plans named after
well-known golf courses such as St. Andrews, Spyglass and Augusta. Complainant
advertises this project in South Florida and throughout the United States.
Complainant advertised the domain name <turnberryonthegreen.com>
before taking steps to register it, when it discovered that it was already
registered.
Complainant
has used the mark TURNBERRY for the last 40 years in respect to various
commercial and residential development projects. It has US registrations and
applications for TURNBERRY ISLE (registered August 1, 2000; another application
filed April 2, 1999); TURNBERRY ISLE design plus words (registered May 22,
1990); TURNBERRY (registered March 28, 2000; two further applications filed
March 29, 1999; two further applications filed April 2, 1999); ONE TURNBERRY
PLACE (registered March 28, 2000); TURNBERRY PLAZA (registered August 6, 2002);
TURNBERRY ASSOCIATES (application filed March 29, 1999); TURNBERRY PLACE in
various forms and classes (six applications filed April 2, 1999) and TURNBERRY
TOWER SHOPS (application filed January 7, 2002).
Complainant
applied on June 5, 2002 for Federal registration of the mark TURNBERRY ON THE
GREEN for “apartment rental services”, stating the date of first use as
February 19, 2002 and the same date as the date of first use in commerce. Likewise
it registered the same mark in Florida on July 29, 2002, for the same services,
specifying February 19, 2002 as the date of first use in Florida and the date
of first use anywhere.
The
disputed domain names were registered on March 15, 2001 in the name
International Languages, of 94 Cumberland Street, ste 807, Toronto, Ontario
m5rla3, Canada, as registrant, with Mr. Joseph Davidovic, of the same address,
as Administrative and Billing Contact. They have not been used.
On
behalf of Complainant, Mr. Phil Perko asked Mr. Davidovic in a telephone
conversation why he had registered the domain name <turnberryonthegreen.com>
and was told that Mr. Davidovic’s partner in South Florida had heard about
Complainant’s Turnberry On The Green residential development and said it was a
good domain to buy. Mr. Davidovic then offered to sell both disputed domain
names for $300. This offer was accepted and on April 21, 2002, Mr. Davidovic
prepared, signed and sealed with the seal of International Languages, Inc. an
agreement to transfer both disputed domain names and faxed it to Mr. Perko.
This was signed on behalf of Complainant and faxed back to Mr. Davidovic.
A
WHOIS search conducted on April 22, 2002 revealed the disputed domain name <turnberryonthegreen.com>
was still registered in the name International Languages.
The
agreement was not honoured. Mr. Davidovic explained to Mr. Perko that this was
because his partner in South Florida thought the disputed domain names were
worth substantially more than $300.
Some time
after April 21, 2002 the name of the registrant of the disputed domain names
was changed to Turnberry, Scotland Golf and Leisure, c/o International
Languages, Inc. at the Cumberland Street address. The Administrative contact
was also changed to Turnberry, Scotland Golf and Leisure, with the same street
and email addresses as Mr. Davidovic. Complainant says these changes amounted
to ‘cyberflying’ in an attempt to circumvent the Policy.
On
May 3, 2002, in response to a formal demand from Complainant’s attorneys, Brian D. Albert Esq., the attorney
representing “Mr. Joseph Davidovic (International Languages, Inc.) and the
owner of the [disputed] domain names” denied that Mr. Davidovic entered
into a contract to sell those names; denied that Mr. Davidovic or International
Languages, Inc. was the owner, registrant or authorized licensee of those
domain names and asserted that they were not authorized to transfer those
names, which were registered in the name of Mr. Davidovic and his company on
behalf of and in trust for their owner, to whom Mr. Davidovic provides web
development services. Mr. Albert noted the advertising by Complainant of <turnberryonthegreen.com>
on a billboard at Complainant’s construction site, claimed that it would cause
confusion and asserted that it was placing a burden on his client’s web
servers. He demanded Complainant cease use of his client’s trade name.
In
a subsequent letter dated June 24, 2002, Mr. Albert noted that Complainant had
begun using the domain name <turnberryonthegreen.biz> and
asserted that his client’s web and email servers were being overwhelmed with
communications intended for Complainant, due to the fact that his client had
yet officially to launch its website. He suggested as solutions either payment
by Complainant of a monthly fee of $10,000 so long as it used the <turnberryonthegreen.biz>
domain name or transfer to Complainant of the <turnberryonthegreen.com>
domain name for its fair market value plus his client’s expected profits from
its use over the life of the domain name. The value he placed on the domain
name was $950,000 and an offer from Complainant was invited. No mention was
made of the <turnberry-on-the-green.com> domain name.
Complainant
contends that the disputed domain names are identical to its trademark
TURNBERRY ON THE GREEN and that Respondent has no rights or legitimate interest
in them because it has not used them, is not known by that name and has no
trademark or service mark rights in them. Further, Complainant says Turnberry,
Scotland Golf and Leisure is not a known legal entity in the United States or
Canada and that Respondent’s sole intention for the change in registrant name
was to fabricate a basis to renege from the executed agreement to sell the
names and to cloud the issue of the actual owner.
Complainant
says the disputed domain names were registered and are being used in bad faith,
relying on each of paragraphs 4(b)(i), (ii), (iii) and (iv) of the Policy.
B.
Respondent
Respondent
is a Canadian start-up organized to develop an informational website about
golfing and leisure in the world famous Turnberry region of Scotland. Respondent began preparing a business plan
in February 2001 and engaged Mr. Davidovic’s company, International Languages,
Inc. to register the disputed domain names on its behalf. Accordingly,
Respondent became the registrant on March 15, 2001 even though International
Languages registered the domain names in its own name, as it does for each of
its clients, in order to provide trouble-free account management.
Shortly
thereafter Respondent commenced its efforts to raise venture capital to fund
the development and marketing of the website. This process took longer than
expected and has not been as successful as anticipated. Respondent embarked on
a yearlong odyssey to raise seed capital at the same time that Internet venture
capitalists were closing their coffers. About one year later, in early 2002,
Respondent decided to attempt to develop the website on a shoestring and began
to re-draft its business plan. At about this time, in late April 2002, Mr.
Davidovic received a phone call from Mr. Perko on behalf of Complainant.
Mr.
Davidovic was not the registrant of the disputed domain names and did not have
the authority to transfer them. In agreeing to sell them, he mistook them for
two other domain names that he did have authority to sell, belonging to another
of his clients. He did not realize his mistake until he reported to Respondent
that he had sold the names for $300, whereupon Respondent immediately told Mr.
Davidovic that he had no authority to do so. Respondent also urged Mr.
Davidovic to change the registration information to Respondent’s trade name,
Turnberry, Scotland Golf and Leisure, to minimize the possibility of such a
mistake recurring. This change in the WHOIS registration information took place
in late April 2002.
Respondent
does not deny that the disputed domain names are identical to Complainant’s
mark. Complainant did not use the
corresponding mark until February 19, 2002 and has provided no evidence
suggesting that Respondent or anyone else named in the Complaint knew about
Complainant’s use or intended use of the corresponding mark at the time
Respondent registered the disputed domain names. The fact that Respondent
registered the disputed domain names almost one year before Complainant first
used the corresponding trademark makes it impossible for the Panel to find for
Complainant.
“Turnberry”
is a common trade name used globally by many companies for many purposes and in
many derivatives, especially in the real estate and golf industries.
Complainant does not have an exclusive right to use the Turnberry name nor does
it have an exclusive right to all corresponding domain names.
When
Mr. Davidovic received a letter from Complainant’s attorney on May 1, 2002,
Respondent decided temporarily to cease all further development of its website
pending resolution of the matter. Respondent must expend all of its energy and
resources on defending its right to retain the disputed domain names, which form
the foundation of Respondent’s developing business. Respondent had definitive
plans to begin using the disputed domain names at around the time that
Complainant began its proceedings. It registered the disputed domain names more
than one year in advance of the targeted launch of its website. Respondent has
put its plans on hold due to the harassment of Complainant, other than to post
some basic information about golfing in Scotland as a public service.
Respondent
has chosen not to provide any additional information regarding the specific
steps that it has taken in developing its website because it does not believe
any further information is necessary in order to prevail and because it
believes this proceeding constitutes harassment. Respondent does not wish to provide any additional information
regarding its plans to Complainant.
As
to Complainant’s allegation that Respondent is not a known legal entity,
Respondent is a company in formation. Its efforts to transcend the formative
stage have been stifled by Complainant’s persistent harassment. It operates as
a limited partnership. Shortly before the commencement of commercial
activities, Respondent plans to incorporate.
Respondent
is making legitimate non-commercial or fair use of the disputed domain names
because Respondent has created a website providing information about golfing in
Scotland.
Because
the disputed domain names were registered almost one year before Complainant’s
first use of the trademark, Respondent could not have registered the domain names
for any of the prohibited purposes and it is impossible to allege and prove bad
faith. As to the alleged agreement by
Mr. Davidovic to sell the disputed domain names, he was neither the owner nor
the registrant and had no authority to transfer the names.
Complainant
should not have used Respondent’s counsel’s letter referring to the amount of
$950,000 since it was a confidential settlement communication and therefore
inadmissible in evidence for any purpose. The Panel should consider all the
correspondence, including that letter, which did not contain an offer but an
invitation to make an offer that would compensate Respondent for the fair
market value of the disputed domain names, having regard to the burden suffered
by Respondent consequent upon Complainant’s use of one of the disputed domain
names in its billboard advertising since about February or March 2002.
Respondent
had no knowledge of Complainant’s intent to use its corresponding mark until
Complainant contacted Mr. Davidovic in April 2002. Complainant has not provided
any evidence that the general public had any knowledge of the name of its
project before February 2002. Although International Languages has a Miami
office about 25 miles from the development site and Respondent’s counsel also
has a Miami office, they would have had no way of knowing the name of the
project before February 2002 when Complainant first used the name “Turnberry on
the Green”.
Respondent
has not registered any other domain names that incorporate any of Complainant’s
marks or the name “Turnberry”.
Mr.
Perko’s allegations are denied on oath by Mr. Davidovic, supported by
affidavits of Mr. Franchois and Mr. Albert.
Mr.
Franchois, a partner of Mr. Davidovic in another business, who is intimately
familiar with Mr. Davidovic’s business practices, attests to Mr. Davidovic’s
honesty and good faith and to his habit of registering domain names on behalf
of clients in the name of International Languages, saying that in those
circumstances “the client is the registrant and “owner” of the rights to the
domain names”, that International Languages retains no property interest in
the domain names and that “most web development companies register domain
names for their clients in their own name”.
Mr.
Albert attests to having conducted an investigation of the issues and
allegations raised in the Complaint, after being retained by Respondent in this
proceeding, and that “All of the facts in the Response that are not
otherwise supported by exhibits to the Response are based on my personal
knowledge and are the fruits of my investigation into the issues and
allegations raised in the Complaint”.
Complainant’s
case is a fantasy and the proceedings amount to attempted reverse domain name
hijacking.
C.
Additional Submissions
All
submissions following the Response were timely, as contemplated by Forum
Supplemental Rule 7, but none were requested by the Panel under Rule 12.
Accordingly, for the reasons given by the learned 3-member panel in Am.
Online, Inc. v. Adrian Paul Miles d/b/a AD2000D.com FA 105890 (Nat. Arb.
Forum May 31, 2002) this Panel is not obliged to take any of those unsolicited
submissions into account.
Rule 12 does not preclude acceptance of additional uninvited
submissions under the Panel’s general powers conferred by Rule 10, particularly
having regard to the Panel’s duty under Rule 10(b) to ensure that each party is
given a fair opportunity to present its case. If a Respondent raises matter
which the Complainant could not have been expected to have addressed in its Complaint,
admission of an uninvited reply may be warranted in the interests of fairness.
It would be an odd result if the Panel may request a reply in such
circumstances under Rule 12 but must refuse an uninvited reply on the same
topic, simply because there is no express provision for such a reply in the
Rules. Accordingly, it is appropriate to consider the circumstances of each
case before deciding whether to admit unsolicited additional submissions. See
Viz Communications, Inc., v. Redsun d/b/a www.animerica.com and David
Penava,D2000-0905 (WIPO Dec. 22, 2000); see also Rollerblade, Inc. v.
CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000).
Here
the Response raised the issue of Reverse Domain Name Hijacking, to which a
Reply would normally be appropriate. However, the Reply seeks to address this
issue by going over ground already covered in the Complaint. Under these
circumstances the Panel does not regard the Reply as warranting admission.
Insofar as the Reply seeks to provide evidence of trademark use prior to the
initial registration of the disputed domain names by International Languages,
Complainant should have addressed that issue in its Complaint. For these
reasons the Panel does not admit the Reply or any of the documents attached to
it. It follows that none of the subsequent submissions from the parties and
their accompanying documents are admitted and the Panel has no regard to them
in making its determination.
FINDINGS
Complainant has established all the
elements necessary to entitle it to relief.
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.
Respondent’s case vigorously asserts that there is no
evidence of use by Complainant of the mark TURNBERRY ON THE GREEN prior to
February 19, 2002, the “date of first use” nominated in the United States and
Florida filings. However, a close reading of the Response (over 11,000 words
long, despite complying with the 10-page limit) reveals that Respondent does
not contest, and indeed asserts, that the mark was first used on that date. The
Panel finds that Complainant has rights at common law to the mark TURNBERRY ON
THE GREEN in relation to apartment rental, dating from February 19, 2002, as
well as its subsequently registered Florida trademark. The pending U.S.
application does not give rise to any trademark rights.
Identical and/or Confusingly Similar
Respondent concedes that the disputed
domain names are identical to Complainant’s trademark TURNBERRY ON THE GREEN
and the Panel so finds. None of Complainant’s other marks incorporating the
word TURNBERRY afford any assistance to Complainant, having regard to the
additional elements in the disputed domain names, which distinguish them from
those other marks.
Complainant has established this element
of its case.
Rights or Legitimate Interests
The disputed
domain names were initially registered in March 2001 in the name International
Languages, which thereby became the registrant. The registration agreement
provides in clause 14 that the person named as registrant on the WHOIS shall be
the registered name holder.
The
register maintained by an ICANN registrar must provide accurate information as
to the identity of domain registrants. The human person or other legal entity
shown as the registrant must be assumed to be such by third parties seeking to
ascertain a registrant’s identity by such means as a Whois search. There is no
place for the registration of bare trustees or agents for unnamed
beneficiaries, principals or would-be purchasers. In that respect, a domain
name register is like the register for land and shipping under the Torrens
system found in many common law jurisdictions. In other words, the register is
everything: no unregistered interests can prevail against the interests of bona
fide third parties relying on information available on the register for all the
world to see. See Univ. of Maryland Univ. College v. Nucom Domain
Brokers & Urban Music Underground Club, D2002-0081 (WIPO April 29, 2002); see
also Gloria-Werke H.
Schulte-Frankenfeld GmbH & Co v. Internet Dev. Corp. and Gloria MacKenzie, D2002-0056 (WIPO April 26, 2002).
Accordingly,
whatever might have been the arrangement between Respondent and International
Languages or Mr. Davidovic, the Panel finds that Respondent did not become the
registrant until its name appeared as registrant on the WHOIS in April 2002.
It is common ground that Mr. Perko represented to Mr.
Davidovic in April 2002 that the disputed domain names corresponded to a
trademark owned by Complainant: Davidovic ¶16, Perko ¶5. The Response says
Respondent had no knowledge of Complainant’s intent to use the corresponding
marks until Complainant contacted Mr. Davidovic in April 2002. The Panel infers
that Mr. Davidovic so informed Respondent before the name of the registrant in
the WHOIS was changed from International Languages to Respondent.
Accordingly, the Panel concludes that Respondent was aware
of Complainant’s asserted trademark rights before it registered the disputed
domain names in its own name. By that time, as the Panel has found, the mark
had been in use by Complainant since February 19, 2002.
Respondent thus became registrant of the
disputed domain names at a time when, to its knowledge, Complainant was
asserting its trademark rights and actively seeking transfer to Complainant of
the disputed domain names from Mr. Davidovic (International Languages).
Respondent could have been in no doubt that Complainant gave Respondent no
permission to use its mark nor to register the disputed domain names.
Respondent’s name is not the same as
either of the disputed domain names.
There is no evidence Respondent made any use of the disputed domain
names before the Complaint was filed. There is no evidence to support
Respondent’s assertions that it embarked on a year-long odyssey to raise
venture capital, drafted any business plan, redrafted any business plan or ever
intended, prior to the filing of the Complaint, to establish a website at
either domain name devoted to golf in Scotland or anything else. Respondent has
chosen not to provide to the Panel any such evidence and it is therefore not
surprising that, pursuant to Rules 10(d) and 15(a), the Panel finds, on the
admissible statements and documents submitted, that Respondent has not
established that it has any rights or legitimate interests in either of the
disputed domain names. The affidavit of Respondent’s Counsel attesting to the
truth of Respondent’s assertions cannot be given any weight because he was not
engaged by Respondent until after the events and cannot therefore have direct
knowledge of them.
Under these circumstances the Panel is
satisfied that Complainant has established this element of its case.
Registration and Use in Bad Faith
The
Panel has found that Respondent became the registrant of the disputed domain
names in April 2002, with knowledge of Complainant’s asserted trademark rights.
On May
1, 2002, Complainant’s Counsel wrote a cease and desist letter to International
Languages seeking compliance with the alleged contract to sell the disputed
domain names for $300. Respondent’s Counsel replied on May 3, 2002, stating
that he represented Mr. Davidovic (International Languages) and “the owner of
the [disputed] domain names” (without identifying that owner), distinguishing
between Mr. Davidovic and the “owner” and denying Complainant’s assertions.
Respondent’s
Counsel wrote again to Complainant’s Counsel on June 24, 2002. Objection is
taken that this letter was a confidential settlement communication, which
should not be admitted in these proceedings on public policy grounds. See
Hungry Minds, Inc. v Mall For Dummies, FA 96635 (Nat. Arb. Forum April
4, 2001); Alcoholics
Anonymous World Servs., Inc. v. Friends of Bill W and Jimmy K, D2001-1124
(WIPO Dec. 28, 2001); Am. Online, Inc. v. Popixel Art d/b/a Am. Online
Latino, D2001-0957 (WIPO Nov. 20, 2001); Media West-CPI, Inc. and Cape
Publications, Inc. v. Space Coast Computer Techs., Inc., D2001-1458 (WIPO
Feb. 16, 2002).
The
Panel is not satisfied that this letter is a confidential settlement
communication. It is not so expressed (although this is not determinative). It
was not a reply to Complainant’s Counsel. It was written several weeks after
the exchange just described. It raised fresh issues, including the alleged
adverse effects upon Respondent of Complaint’s use of the domain name <turnberryonthegreen.biz>.
The Panel admits the letter.
In it, Respondent’s Counsel stated that his client had
authorized him to propose either rental by Complainant of <turnberryonthegreen.com>
for $10,000 per month (plus 3 months back rental) or transfer to Complainant of
the domain name <turnberryonthegreen.com>:
“for an amount that will fully
compensate it for the fair market value of the domain name and the amount of
profits that my client expects to generate from the domain name (and its
related business) over the life of the domain name. Based on our appraisal of
the domain name and an estimate of its profit potential, I have advised my
client that the domain name ‘TurnberryOnTheGreen.com” is worth $950,000. As
such, I welcome your client to make an offer for the domain name that would
fairly compensate my client for the value of the domain name”.
The Panel has no difficulty on the basis of this letter in
concluding that Respondent registered the domain name <turnberryonthegreen.com>
in April 2002 in its name primarily for the purpose of selling or renting or
otherwise transferring that domain name registration to Complainant, the owner
of the trademark, for valuable consideration in excess of its documented
out-of-pocket costs directly related to the domain name.
Since Respondent became registrant of the domain name <turnberry-on-the-green.com>
at the same time, with the same knowledge and under the same circumstances, the
Panel makes the same findings in relation to that name also, even though that
domain name was not mentioned in the letter of June 24, 2002.
Accordingly the Panel finds the disputed domain names were
registered and are being used in bad faith, within the meaning of clauses
4(b)(i) and 4(a)(iii) of the Policy.
Complainant has established this element of its case.
Reverse Domain Name Hijacking
Since Complainant has established all the elements necessary
to entitle it to relief, it follows that it had every reason to bring these
proceedings and that there is no substance in this allegation.
The Panel directs that the domain names
<turnberryonthegreen.com> and <turnberry-on-the-green.com>
be TRANSFERRED to Complainant.
Alan L. Limbury, Panelist
Dated: November 3, 2002
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