national arbitration forum

 

DECISION

 

Alticor Inc. v. Cao Mai

Claim Number: FA1309001521565

PARTIES

Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA.  Respondent is Cao Mai (“Respondent”), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buy-artistry.com>, registered with ENOM, Inc.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2013; the National Arbitration Forum received payment on September 27, 2013.

 

On September 27, 2013, ENOM, Inc. confirmed by e-mail to the National Arbitration Forum that the <buy-artistry.com> domain name is registered with ENOM, Inc. and that Respondent is the current registrant of the name.  ENOM, Inc. has verified that Respondent is bound by the ENOM, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2013 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@buy-artistry.com.  Also on October 1, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.            Complainant is one of the world’s largest direct selling companies.  Its ARTISTRY and AMWAY trademarks and brands are well known the world over.  Complainant has marketed and sold ARTISTRY brand products for over 40 years.  Amway Corporation, the original owner of the ARTISTRY trademark, was founded in 1959.  In 2000, Amway Corporation changed its name to Alticor Inc. and changed the name of one of its subsidiaries to Amway Corporation. 

 

2.            Through a network of more than 3 million independent business owners, Complainant distributes ARTISTRY products worldwide, including in the United States.  Complainant’s global sales of ARTISTRY products totaled over US$1.5 billion for the 2012 performance year, which ended December 31, 2012.

 

3.            The ARTISTRY product line includes a wide variety of health and beauty products including cosmetics, skin care products, and hair care products. 

 

4.            Complainant, through its related companies and affiliates, has extensively marketed and promoted ARTISTRY brand products and services throughout the world.  Such advertising and promotion of the ARTISTRY mark has included promotional literature, direct mailings, brochures, videos, presentations, internet web pages, signage, press releases, media interviews and press coverage, meetings, seminars, educational programs, rallies and other events with independent business owners, and many other forms.

 

5.            Complainant is the owner of seven active trademark registrations and eight pending applications with the United States Patent and Trademark Office (“USPTO”) for marks that include the word ARTISTRY for a wide variety of products and services.  These registrations are for the word ARTISTRY alone, as well as stylized versions and the word ARTISTRY combined with logos and/or other words.  The earliest of these registrations was issued in 1968. 

 

6.            Complainant is also the owner of numerous trademark registrations worldwide for marks containing the term ARTISTRY alone, stylized, and with logos and/or word combinations,

 

7.            Regarding domain names, Complainant owns over 1,300 generic top level domain names.  These include artistry.com, artistrybeauty.com, amwayartistry.com and many other variations.

 

8.            Additionally, Complainant is also the owner of active trademark registrations with the USPTO for the TOLSOM and LEGACY OF CLEAN marks.  TOLSOM is the mark associated with Amway’s premium line of men’s skin-care products and LEGACY OF CLEAN is the mark associated with Amway’s eco-friendly line of household cleaning products.  TOLSOM and LEGACY OF CLEAN products are sold by Amway worldwide.

 

9.            Additional information about Complainant and the ARTISTRY brand can be seen at www.amway.com and www.artistry.com.

 

 

 

FACTS ABOUT RESPONDENT

 

10.         The Whois database identifies the owner of the buy-artistry.com domain as the privacy service WhoisGuard, Inc./WhoisGuard Protected.  Neither this privacy service nor the apparent true registrant of the domain (together the “Respondent”) are in any way affiliated with or authorized by Complainant.  As noted above, Complainant sells its products through a network of authorized independent business owners (“IBOs”).  To the best of Complainant’s knowledge, based on the contact information contained in the WhoIs records for the domain name and on the website at the domain, Respondent is not now, nor has it ever been, an IBO authorized by Complainant to sell its products.

 

11.         But, even if Respondent were an IBO, Complainant does not allow its authorized IBOs to use its ARTISTRY trademark in domain names.  Nor does Complainant allow use of the ARTISTRY, TOLSOM, or LEGACY OF CLEAN trademarks on web pages without Complainant’s prior consent. 

 

12.         Respondent’s website at buy-artistry.com offers Complainant’s ARTISTRY products for sale in association with Complainant’s ARTISTRY mark.  Furthermore, Respondent’s website at buy-artistry.com also includes ARTISTRY within the domain name and clearly targets consumers of and those interested in Complainant’s products and services. 

 

13.         The buy-artistry.com site offers for sale many of Complainant’s products including Complainant’s ARTISTRY, TOLSOM, and LEGACY OF CLEAN products.  Respondent’s use of the ARTISTRY, TOLSOM, and LEGACY OF CLEAN marks will clearly lead to confusion that Respondent is a subsidiary or affiliate of Complainant, when it is not.

 

14.         Thus, there can be no doubt that Respondent’s website will create a false association between Respondent and Complainant.

 

APPLICATION OF PARAGRAPH 4(a) OF THE POLICY TO THE FACTS

 

A.        The Domain Name is Identical or Confusingly Similar to Complainant’s mark.

 

15.         Complainant has clearly established its rights in the ARTISRY mark through its numerous registrations covering the U.S., as well as numerous other countries, and its widespread use of the mark for over 40 years.  See Fluke Corp. v. Jon Cullum d/b/a TFunk, FA 267476 (Nat. Arb. Forum June 4, 2004); Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the . . . mark with the USPTO establishes Complainant’s rights in the mark.”) 

 

16.         Further, the domain name buy-artistry.com is unquestionably confusingly similar to Complainant’s famous ARTISTRY mark.  It simply contains Complainant’s ARTISTRY mark with the word “buy” and a hyphen added and the site contains unauthorized use of the ARTISTRY mark.  It is well established that the addition of a generic or descriptive term is insufficient to distinguish a domain name from a well-known mark.  Victoria’s Secret Stores Brand Management, Inc. v. MGA / MGA MGA, FA1410010 (Nat. Arb. Forum Nov. 16, 2011) (concerning the addition of the Turkish word “magaza,” which translates to “store,” in victoriassecretmagaza.com); Mattel, Inc. v. Collector Cars, FA 243500  (concerning the addition of the term “dreams” in hotwheelsdreams.com); Compaq Information Technologies Group LP v. Dealer Direct Inc. d/b/a Inacom Information Systems, FA 97062 (Nat. Arb. Forum June 14, 2001) (concerning the addition of the terms “direct” and “direct plus” in compaqdirect.com and compaqdirectplus.com); Mattel, Inc. v. Kim Hyun Jung, FA 256978 (Nat. Arb. Forum June 7, 2004) (concerning the addition of the term “style” in barbiestyle.net); Bose Corp. v. Adplus Etc., S.A., FA 314279 (Nat. Arb. Forum Sept. 30, 2004) (concerning the addition of the term “etc.” in boseetc.com).  In the same way, the addition of the generic word “buy” does not differentiate the domain name from Complainant’s ARTISTRY mark. 

 

17.         For these reasons, the buy-artistry.com domain name is confusingly similar to Complainant’s ARTISTRY mark, and Complainant has established the requirements of Paragraph 4(a)(i) of the Policy in its favor.

 

B.        Respondent Does Not Have Any Rights or Legitimate Interests in the Names

          ARTISTRY or BUY-ARTISTRY.

 

18.         Respondent is not now, and never has been, commonly known by, nor does it have any other legitimate rights in, the names ARTISTRY or BUY-ARTISTRY, nor is Respondent using the buy-artistry.com domain name in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use.

 

19.         Complainant never authorized Respondent to use the ARTISTRY mark in any domain name.  Respondent is not a subsidiary or affiliate of Complainant nor is (s)he currently one of Complainant’s authorized IBOs.

 

20.         Even if Respondent were an IBO, Complainant never authorized Respondent to use the ARTISTRY mark in any domain name.  Quite the contrary, the rules that IBOs agree to abide by specifically preclude use of the ARTISTRY mark in this manner unless Complainant granted prior written consent, which it has not.

 

21.         Additionally, it is well-recognized that status as a distributor of the Complainant’s products would not give the Respondent any right to or legitimate interest in registering a domain name containing the ARTISTRY mark.  “It is established under the Policy that a distributor does not necessarily have the right to use a supplier’s mark in a confusingly similar domain name, without a specific agreement to the contrary.”  Herbalife Int’l Inc. v. SHOPHERBALIFE.COM a/k/a Cleverson Ezora, FA 281593 (Nat. Arb. Forum July 19, 2004); Associated Materials, Inc. v. Perma Well Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent was not authorized to use complainant’s mark in its registered domain name and thus, was not using the domain name as a bona fide offering of goods and services, nor a legitimate noncommercial or fair use); Allen-Edmonds Shoe Corp. v. Takin’ Care of Business, D2002-0799 (WIPO Oct. 10, 2002) (“[E]ven where a reseller is an authorized reseller, without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name.”); Carlon Meter Co. v. Jon Jerman, D2002-0553 (WIPO July 30, 2002) (“Respondent may well be an important distributor of Complainant’s products, but its right to use the trademarks of Complainant do not necessarily extend to a right to use the globally extensive domain name system by incorporating these trademarks in the [d]omain [n]ames in a manner which links them to Respondent’s web site.”); The Proctor & Gamble Co. v. Marilyn Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002).  Complainant’s rules for its IBOs preclude them from using the ARTISTRY mark as part of a domain name.

 

22.         As a result, Respondent clearly is not known by ARTISTRY or BUY-ARTISTRY, and is not using its domain name for a bona fide offering of goods or service, nor as a legitimate noncommercial or fair use, and Complainant has established the requirements of Paragraph 4(a)(ii) of the Policy in its favor.

 

23.         Finally, if Respondent fails to respond, such failure may be construed as an admission by Respondent that it lacks rights in legitimate interests in the disputed domain name.  Solidvision, Inc. v. Domain Deluxe, FA 374615 (Nat. Arb. Forum Jan. 20, 2005). 

 

C.       Respondent’s Registration of the Domain Name to Divert Persons Looking for Complainant on the Internet Constitutes Bad Faith Under the Policy.

 

24.         Complainant’s ARTISTRY mark is well known and famous worldwide.  It has been in use for over 40 years.  It is used in over 80 countries with annual sales in the billions of dollars.

 

25.         “The use of a domain name confusingly similar to a trademark that has gained fame is evidence of bad faith.”  TruServ Corp. v. TrueValue.net, FA 214460 (Nat. Arb. Forum January 21, 2004); Household Int’l, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum Nov. 7, 2002) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner.”)

 

26.         Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not.  Respondent’s conduct in creating the false impression that it is an authorized distributor of Complainant’s products constitutes bad faith.  Laboratoires De Biologie Vegetale Yves Rocher v. Jung Choi, FA 104201 (Nat. Arb. Forum, Mar. 22, 2002) (“[Complainant] is however not an ‘authorized’ retailer of the products, and it is improper to utilize a domain name implying the contrary.”); Herbalife, supra, FA 281543 (finding that Respondent’s use of a domain name confusingly similar to Complainant’s mark after their distributor agreement terminated constituted bad faith use); Labrada Bodybuilding Nutrition, Inc. v. Garrett, A 94293 (Nat. Arb. Forum Apr. 27, 2000) (same); Great Am. Knitting Mills Res. Corp. v. Sock Co., FA 95841 (Nat. Arb. Forum Dec. 7, 2000) (stating that “[w]hile Respondent may continue to sell Gold Toe socks acquired from various sources, it is not an ‘authorized’ retailer of Gold toe socks, and it is improper to utilize domain names implying to the contrary” in finding that Respondent used the disputed domain names in bad faith).

 

27.         For the above reasons, Complainant has established bad faith under Paragraph 4(a)(iii) of the Policy.

 

B. Respondent

Respondent failed to submit a response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove the following three elements to obtain an order canceling or transferring a domain name:

 

(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(e), 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 (Nat. Arb. 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.”).

 

Identical and/or Confusingly Similar

Complainant uses its ARTISTRY trademark in connection with its wide-ranging health and beauty product line, which includes cosmetics, skin care products, and hair care products. Complainant owns rights in the ARTISTRY mark through registrations of the mark with the United States Patent & Trademark Office (“USPTO”) by Complainant and its predecessor company (e.g., Reg. No. 856,184 registered September 3, 1968). A complainant’s registration of its mark with the USPTO sufficiently establishes the complainant’s rights in the mark pursuant to Policy ¶4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). A complainant does not need to register its mark with in the respondent’s country of residence to establish its rights in the mark under Policy ¶4(a)(i). See, e.g., KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Complainant’s registration of the ARTISTRY mark with the USPTO sufficiently establishes Complainant’s rights in the mark under Policy ¶4(a)(i), even though Respondent appears to reside in Vietnam.

 

Complainant claims the <buy-artistry.com> domain name is confusingly similar to its ARTISTRY mark because the domain name fully incorporates the mark and merely adds a hyphen and the generic term “buy.” The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” A domain name’s addition of a gTLD is irrelevant for the purpose of a confusing similarity analysis because it is required by the internet’s domain name syntax (and to hold otherwise would be to eviscerate the UDRP). See, e.g., Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”). Adding a hyphen to domain name’s does not adequately distinguish the domain name from a complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”). Similarly, it has been previously held that a disputed domain name’s addition of a generic word such as “buy” does not adequately distinguish the domain name from a complainant’s mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The <buy-artistry.com> domain name is confusingly similar to Complainant’s ARTISTRY mark under Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant claims Respondent is not commonly known as <buy-artistry.com> or any name containing Complainant’s ARTISTRY mark.  Respondent does not have Complainant’s permission to use Complainant’s ARTISTRY mark in a domain name. Although Respondent holds itself out to be an affiliate or licensee of Complainant on the at-issue website, this isn’t true. In Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000), the panel held the respondent was not commonly known by the disputed domain name under Policy ¶4(c)(ii) where the respondent was not a licensee of the complainant and did not otherwise have the complainant’s permission to use the complainant’s mark in a domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held the respondent was not commonly known by the disputed domain name where the complainant claimed it did not give the respondent permission to use its mark in a domain name and there was no other information in the record, including the WHOIS information, which indicated the respondent was commonly known by the disputed domain name. The WHOIS information now identifies the registrant of the <buy-artistry.com> domain name as “Cao Mai,” which tends to show Respondent is commonly known by this name and not by the name of <buy-artistry.com>. Taking into account the WHOIS information and Complainant’s claim it has not given Respondent permission to use its ARTISTRY mark in any capacity, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).

 

Complainant claims Respondent’s use of the <buy-artistry.com> domain name does not constitute 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) because Respondent is using the disputed domain name to sell Complainant’s ARTISTRY brand goods without Complainant’s authorization. According to a screenshot provided by Complainant, the at-issue website promotes a variety of ARTISTRY skin care products, including links to purchase “ARTISTRY TIME DEFIANCE Cleansing Treatment,” “ARTISTRY essentials Balancing Cleanser,” and “ARTISTRY essentials Hydrating Cleanser.” This Panel is not willing to accept this suggestion, assuming the products are genuine (Complainant does not suggest the products are counterfeit).  Apparently Respondent is actually selling genuine Complainant products.  Sales are apparently made and the products actually show up as advertised.

 

When this proceeding was started, Respondent held the registration for the disputed domain name in a privacy service.  As such, the holder of the bare legal title acquired no rights to the disputed domain name because it didn’t use the domain name for its own purposes.  The beneficial owner (now identified as Respondent once this proceeding commenced) acquired no rights because Respondent was not publicly associating itself with the domain.  For this reason alone, Respondent has no rights or legitimate interests in the disputed domain name.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent has disrupted Complainant’s business in bad faith because the <buy-artistry.com> domain name targets potential customers of Complainant seeking products under the ARTISTRY mark and diverts them away from Complainant’s sites to Respondent’s commercial site, which in turn offers Complainant’s ARTISTRY products at discounted prices.  This Panel is not willing to find bad faith registration and use simply because Respondent sells Complainant’s products at a discount.

 

Complainant claims Respondent has also demonstrated bad faith registration and use of the <buy-artistry.com> domain name under Policy ¶4(b)(iv), because the disputed domain name and the contents of the resolving commercial website mislead Internet users to believe Respondent is an affiliate or authorized dealer of Complainant’s ARTISTRY products when Respondent is not. It appears this was done with the intention to disrupt Complainant’s business (a competitor), which is adequate evidence of bad faith registration and use of the disputed domain name under Policy ¶4(b)(iii).

 

Policy ¶4(b)(iv) allows the Panel to find bad faith registration and use if by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.  The facts also support this conclusion.

 

Finally, Respondent registered the disputed domain name using a privacy service.  This Panel has repeatedly held this raises a rebuttable presumption of bad faith registration and use in a commercial context.  Respondent has done nothing to rebut this presumption.  This fact alone is sufficient to justify a finding of bad faith registration and use.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <buy-artistry.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, November 5, 2013

 

 

 

 

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