National Arbitration Forum

 DECISION

 

Paisley Park Enterprises v. James Lawson

Claim Number: FA0412000384834

 

PARTIES

Complainant is Paisley Park Enterprises (“Complainant”), represented by Catherine E. Maxson of Davis Wright Tremaine LLP, 1501 Fourth Ave, Suite 2600, Seattle, WA 98101.  Respondent is James Lawson (“Respondent”), P.O. Box 8660, Waco, TX 76714.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <paisleyparkstudios.com>, registered with Network Solutions, Inc.

 

PANEL

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

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2004.

 

On December 21, 2004, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <paisleyparkstudios.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@paisleyparkstudios.com by e-mail.

 

A timely Response was received and determined to be complete on January 7, 2005.

 

A timely Additional Submission was received from Complainant on January 12, 2005.

 

A timely Additional Submission was received from Respondent on January 17, 2005.

 

On January 17, 2005, 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.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

Complainant

 

Respondent’s Domain Name Is Confusingly Similar to Complainant’s Trademarks. 

 

PAISLEY PARK and PAISLEY PARK STUDIOS are famous trademarks owned by Complainant.

 

PAISLEY PARK and PAISLEY PARK STUDIOS are trademarks closely associated with Prince, the legendary musician and entertainer, and the sole owner of Complainant.  As early as April 22, 1985, Prince’s company Paisley Park Enterprises released recordings under the mark PAISLEY PARK, and has sold millions of recordings under this mark throughout the United States and the world.  To solidify its rights in the mark PAISLEY PARK, Paisley Park Enterprises obtained two United States trademark registrations as described above in Section 4(c) of this Complaint.  Significantly, the registration for PAISLEY PARK has become incontestable, meaning that this registration is conclusive evidence of Paisley Park Enterprises’ ownership of the PAISLEY PARK mark and its exclusive right to use this mark in connection with phonograph records, audiotapes, CDs, and videotapes.  See 15 U.S.C. § 1115(b).  Paisley Park Enterprises’ other registration, the registration for PAISLEY PARK and Design, functions as prima facie evidence of its rights in the mark.  See 15 U.S.C. § 1115(a).

In addition to the sale of audio and video recordings under the mark PAISLEY PARK, Prince opened the studio complex known as PAISLEY PARK STUDIOS outside of Minneapolis, Minnesota in 1987.  PAISLEY PARK STUDIOS quickly became famous throughout the world as a state-of-the-art recording and film studio.  Many of the world’s top artists have used PAISLEY PARK STUDIOS’ services to create chart-topping music, full-length feature films, commercials, and music videos.  See Complainant’s website at http://www.paisleyparkstudios.net.  Famous musicians who have used the studios for recording and/or rehearsing include REM, Barry Manilow, and the Bee Gees.  This past summer PAISLEY PARK STUDIOS hosted an open house for many audio and video companies.  Through such use of the mark PAISLEY PARK STUDIOS, which has occurred from 1987 to the present, Complainant has acquired nationwide common-law rights in this mark. 

Complainant protects the significant value of the PAISLEY PARK and PAISLEY PARK STUDIO marks.  When Complainant learned of Respondent’s use of the confusingly similar domain name <paisleyparkstudios.com>, Complainant promptly demanded that Respondent cease such use and transfer the infringing domain name to Complainant.  Respondent has refused to comply with Complainant’s demands and has sent no response.  Further emphasizing the close association of PAISLEY PARK and PAISLEY PARK STUDIOS with Prince, and Complainant’s efforts to protect the value of these marks, Complainant has not licensed anyone outside of Prince’s family of companies to use these marks, and certainly has not given Respondent permission to use the PAISLEY PARK STUDIOS mark.

Respondent’s domain name <paisleyparkstudios.com> is confusingly similar to Complainant’s trademarks.

Respondent’s domain name <paisleyparkstudios.com> is confusingly similar to Complainant’s marks.  Indeed, <paisleyparkstudios.com> is identical to Complainant’s mark PAISLEY PARK STUDIOS.  A top-level domain (TLD) like “.com” is a generic term and not a source identifier capable of distinguishing the domain name from Complainant’s otherwise identical PAISLEY PARK STUDIOS mark.  See United States Patent & Trademark Office, TMEP § 1215.02 (3rd ed. 2003) (“When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (“http://www.”) nor the TLD have any source-indicating significance.”), accessible at http://www.uspto.gov/web/offices/ tac/tmep/.

In addition, <paisleyparkstudios.com> is confusingly similar to Complainant’s mark PAISLEY PARK.  The addition of the generic term “studios” does not distinguish the domain name from Complainant’s PAISLEY PARK mark.  See Trump, v. Volk Amit, FA 99688 (Nat. Arb. Forum Oct. 15, 2001) (“[T]he <trumpplazahotel.com> domain name is confusingly similar to Complainant’s mark because the Respondent has merely added the generic word ‘hotel’ to the end of the Complainant’s TRUMP PLAZA mark.  It has been established that the use of generic terms does not defeat a claim of confusing similarity.”).

In light of the similarity between the <paisleyparkstudios.com> domain name and the PAISLEY PARK STUDIOS and PAISLEY PARK marks, consumers would likely think that Complainant was associated with or controlled the domain name <paisleyparkstudios.com>.  Indeed, Complainant chose the virtually identical domain name, <paisleyparkstudios.net>, as the web address for PAISLEY PARK STUDIOS because consumers would expect to find the website for the studios at a domain name consisting of “paisleyparkstudios.”  Clearly Respondent’s domain name is confusingly similar to Complainant’s trademarks.

Respondent has no rights or legitimate interests in respect of the domain name. 

 

Respondent holds no rights or legitimate interests in the <paisleyparkstudios.com> domain name.  To the best of Complainant’s knowledge, Respondent has never made a bona fide offering of, or made any demonstrable preparations to offer, goods or services under the mark PAISLEYPARKSTUDIOS or anything similar thereto.  Complainant has certainly not authorized Respondent to make any use of its famous trademark, and Complainant’s incontestable U.S. trademark registration for PAISLEY PARK is conclusive evidence of Complainant’s exclusive right to use this mark in connection with the goods listed in the registration.  See 15 U.S.C. § 1115(b).  Moreover, Respondent’s choice of a domain name that is identical to one of Complainant’s trademarks, and essentially identical to the other, further indicates that Respondent cannot have rights or legitimate interests in the domain name.  See Trump, v. Volk Amit, FA 99688 (Nat. Arb. Forum Oct. 15, 2001) (“Respondent’s choice of a confusingly similar variation of Complainant’s famous marks supports a finding of a lack of rights or legitimate interests.”).

Nor is Respondent making a bona fide offering of goods or services under, or making any use of, the domain name.  Respondent registered the domain name on June 16, 2003, yet the website associated with the domain name is inactive.  Complainant also has no reason to believe that Respondent is known by the domain name <paisleyparkstudios.com>.  Respondent’s lack of rights or legitimate interest in the domain name warrants transferring the name to Complainant.

Respondent’s Domain Name Was Registered and Is Being Used in Bad Faith.

 

Respondent can have had nothing other than a bad faith basis for registering the domain name <paisleyparkstudios.com> in light of the fame of Complainant’s identical PAISLEY PARK marks.  Knowingly registering a domain name containing a famous trademark is evidence of bad faith.  See Trump, v. Volk Amit, FA 99688 (Nat. Arb. Forum Oct. 15, 2001).  In the Trump case, Complainant held U.S trademark registrations for TRUMP and TRUMP PLAZA for casino, hotel, and entertainment services, and had built up significant rights in these marks.  Eight years after the complainant obtained its registrations, the respondent registered the domain name.  In light of the complainant’s well established and well known rights in the TRUMP marks, the panel concluded that the registrant had known of the complainant’s rights in the TRUMP marks and therefore registered the domain name in bad faith.  See Trump, v. Volk Amit, FA 99688 (Nat. Arb. Forum Oct. 15, 2001). 

As in the Trump case, Respondent must have known of Complainant’s famous marks PAISLEY PARK STUDIOS and PAISLEY PARK when it registered the domain name <paisleyparkstudios.com>.  Complainant has used its marks throughout the world since the mid-1980s and obtained the registrations for these marks in 1998.  However, Respondent did not register the domain name until June 2003, well after Complainant’s marks had become famous.  Surely these marks were known to Respondent at the time he registered the domain name.  Even if Respondent did not have actual knowledge of Complainant’s marks (which is unlikely), Respondent had constructive knowledge of the PAISLEY PARK marks by virtue of Complainant’s trademark registrations. 

Furthermore, Respondent’s failure to use the domain name is evidence of his bad faith.  “Evidence of nonuse of a domain name for a period of time demonstrates use of the domain name in bad faith.”  Pueblo Int’l, Inc. v. xtra-Net Internet Service GmbH, FA 94975 (Nat. Arb. Forum July 17, 2000).  Here, Respondent registered the domain name on June 16, 2003, yet as of December 13, 2004, no use was being made of the site. 

Further still, Respondent’s failure to respond to Complainant’s correspondence about the domain name is evidence of bad faith.  See Pueblo Int’l, Inc. v. xtra-Net Internet Service GmbH, FA 94975 (Nat. Arb. Forum July 17, 2000).  In sum, Respondent has registered the <paisleyparkstudios.com> domain name in bad faith and the domain name should be transferred to Complainant.

Respondent

 

This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name.

 

The Complaints brought against me in this case are based on completely false claims and/or assumptions.

 

My use of the domain name <paisleyparkstudios.com> is not in violation of any of Complainant's claimed PAISLEY PARK trademarks; Complainant's “Paisley Park” name is currently described as a "Defunct Record Label"; and Complainant's Paisley Park Studios has largely been closed since 1996.

 

My use of Paisley Park Studios does not infringe on any of Complainant's claimed PAISLEY PARK trademarks.  There is no resemblance between my use of Paisley Park Studios or <paisleyparkstudios.com> and any of Complainant's claimed trademarks.

 

Very few people know what a “paisley” is.  To most people it's just a design on fabric. Among its many forms, the paisley is a cosmic spiral, commonly found in nature. A double paisley forms the yin-yang symbol, symbolizing the balance of nature.  Paisley designs date back to ancient times, and are full of broad and deep-rooted cultural symbolism. Above all, the paisley is deeply rooted in nature, symbolizing the womb and creation.  The term “park” in this case has a broad meaning, but most specifically refers to “nature park,” referring to the conservation of nature through human stewardship, and human design.  The term “studios” in this case refers to design studio, specifically the ecological design of urban, industrial, and rural “parks” or habitats.

 

For my purpose, “Paisley Park Studios,” and <paisleyparkstudios.com> represent Earth stewardship and sustainable, ecological design.  I have enclosed a typical paisley design, which exemplifies a “Paisley” or nature park.  It symbolizes “creation,” cornucopia or abundance, and the conservation of nature through design, or Earth stewardship.

 

I have also enclosed a few sample pages from my projects related to conservation and environmental design for which I plan to use this domain name.

 

Clearly, I am not in violation of any of Complainant's claimed trademarks.

 

Complainant claims that, because I have not used the domain name in the year and a half since I registered it, that this is an indication that I registered the name in bad faith. That is pure folly.  The simple fact is, I have tons of work I want to put up on the Internet, but a lack of time, and a lack of web skills is a hindrance.  Everything I do takes a lot longer than I plan, including responding to this Complaint.  The reason I have not put the domain name into effect is because of a lack of time and resources.  That does not mean that I am not working on it. I am working on it.  Having to take time away from my work to respond to this Complaint is an example of the many problems that distract from and delay everything I do.  I have worse problems than this that cause my work to back up.

 

This Complaint has been filed against me by the rock star Prince. Complainant states: “Respondent can have had nothing other than a bad faith basis for registering the domain name <paisleyparkstudios.com> in light of the fame of Complainant's identical Paisley Park marks.”  Prior to this Complaint, I knew almost nothing about Prince, and based on my research of the history of the “Paisley Park” name, if you were not a hardcore fan of Prince, you would almost certainly have never heard of it. Paisley Park is currently described as a “Defunct Record Label,” and has been since 1993 or 1994. And Paisley Park Studios has been closed since 1996.

 

Bad faith is demonstrated by lying.  The Complaint states that I “sent no response” to Complainant's charges of trademark infringement, and demands to give them the name. That is not true!  I did send a response to Complainant. I have enclosed a copy of the response I sent to Complainant.  That letter further states my position in response to this Complaint.

 

That letter was almost certainly received by Complainant, and/or his representatives, long before this UDRP Complaint was filed against me.

 

Complainant claims: “common law rights in the United States in the mark Paisley Park Studios based on the use of this mark in connection with recording and rehearsal studio services, and film production and editing services.”  Complainant's Paisley Park Studios has been closed since 1996.

 

One page of Complainant's own exhibits is a copy of an ABCnews.com article, titled, “Prince's Paisley Park Studios Reopens,” which states “Paisley Park has largely been closed since 1996...”

 

See also the following web page, which says:

 

“Paisley Park Studios is no longer open to the public. This site shows the facility as it was when it closed in 1996.” at http://www2.bitstream.net/~tgg/tgg/paisleypark/.

 

Complainant's registered Paisley Park trademarks are for “goods and services” of “phonograph records, audiotapes, compact discs, and videotapes embodying musical performances.”  That trademark was registered in 1998, and I found no indication that it has ever been used in practice. Paisley Park is currently referred to as a “Defunct Record Label,” and has been since 1993 or 1994, four or five years before the current trademark was registered.  Apparently Complainant registered the Paisley Park trademark, in 1998, with the intention of reviving the brand name, but I find no indication that this has been implemented, to this day.

 

The following web page has a copy of a Billboard Magazine article from 1996, which refers to:

 

"Prince's now defunct Warner Bros.-distributed Paisley Park label." at http://www. millennianet.com/dumyhead/jasonbillb.html.

 

On <wikipedia.org>, the most popular encyclopedia on the Internet, Paisley Park is listed in the category of "Defunct Record Labels."

 

I have enclosed copies of two pertinent web pages from <wikipedia.org>. Here are some pertinent quotes from those web pages:

 

“NPG Records was formed by Prince in 1993 to release his music after Paisley Park Records was shut down by Warner Bros.” http://en.wikipedia.org/wiki/NPG_Records  “In 1994, amid Prince's feud with Warner Bros., Warner ended its distribution deal with Paisley Park, effectively closing the label. Prince later started NPG Records.” at http://en.wikipedia.org/wiki/Paisley_Park_Records.

 

And here is the homepage for NPG records: http://www.npgmusicclub.com/.

 

That web page is described as: “Official Home of Prince and The NPG.”

 

NPG is short for Prince's band, the New Power Generation.

 

Prince has a well-publicized history of changing names, and then changing back again. And that certainly appears to play a part in Prince's use of “Paisley Park” and “Paisley Park Studios.”

 

It is highly likely that Complainant stopped using the name “Paisley Park Studios” when he stopped recording under the Paisley Park record label, and created the NPG record label.  Certainly it became of less interest to him.

 

Prince's record label is NPG, and not Paisley Park.  His latest album, in 2004, “Musicology,” was recorded under the NPG record label.

 

Every Prince biography and “discography” I found on the Internet indicates that Prince has not recorded under the PAISLEY PARK brand name since 1993 or 1994.

 

I find no indication that anybody has produced anything under the Paisley Park brand name since 1993 or 1994. Certainly it is not a famous brand that most people would know about.

 

The facts in this case are readily apparent: my use of the domain name is not in violation of any of Complainant's claimed PAISLEY PARK trademarks; Complainant's “Paisley Park” name is or was a defunct record label; and Complainant's Paisley Park Studios has largely been closed since 1996.

 

C. Complainant’s Additional Submission

 

The <paisleyparkstudios.com> domain name is confusingly similar to Complainant’s trademarks.

 

Respondent does not deny that the domain name <paisleyparkstudios.com>  is confusingly similar to the PAISLEY PARK STUDIOS and PAISLEY PARK trademarks.  Indeed, Respondent could not in good faith argue that the domain name and marks are not confusingly similar as they are identical in all relevant respects.  Rather than discussing the confusing similarity between the domain name and the trademarks, Respondent relies on one erroneous and two irrelevant assertions in arguing that Complainant does not have any trademark rights in PAISLEY PARK STUDIOS or PAISLEY PARK.  Such arguments do not overcome Complainant’s proof that it has acquired and still possesses common-law and registered trademark rights in PAISLEY PARK STUDIOS and PAISLEY PARK, respectively.

First, Respondent erroneously claims that Paisley Park Studios has been closed since 1996.  To the contrary, as Complainant correctly asserted in its Complaint, Complainant has consistently offered its recording studio and other services under the trademark PAISLEY PARK STUDIOS since 1987.  PAISLEY PARK STUDIOS is famous throughout the world as a state-of-the-art recording and film studio, and these facilities have been used by many of the world’s top artists.  See http://www.paisleyparkstudios.net (domain name used by Complainant due to Respondent’s registration of <paisleyparkstudios.com>, which points to website describing the services Complainant offers at PAISLEY PARK STUDIOS).  Through such long-term and well-known use, Complainant has established strong common-law rights in the PAISLEY PARK STUDIOS mark throughout the United States. 

To support its incorrect assertion that the studios are closed, Respondent points to an ABCnews.com web page that merely states that Paisley Park Studios has “largely been closed, though Prince continued to record and perform there.”  The other web page to which Respondent points, which comes from <bitstream.net> from 1995, states that the studios were not open to the public.  Importantly, neither of these web pages is entirely accurate and, in any event, neither claim that PAISLEY PARK STUDIOS were completely closed or that Complainant had ceased offering services under the PAISLEY PARK STUDIOS mark.  In fact, the studios never shut down.  For a brief period (from 1996 through the first half of 2004), third parties used the studios at the invitation of Prince.  For example, Larry Graham and Chaka Khan recorded albums there in 1998.  The studios may not have been generally open to the public, i.e., available to any band who might wish to rent out the studios, but they were by no means closed (ABCnews.com web page reports that as of August 2004, Complainant is “‘essentially hanging the ‘open’ sign out front’” of PAISLEY PARK STUDIOS).  Thus, all members of the general public may not have had the ability to use the studios for a brief period, but the recording and rehearsal studio (and related) services that Complainant offers under the PAISLEY PARK STUDIOS mark were actively used by Prince and other musicians throughout this period. 

In addition to his erroneous assertion that PAISLEY PARK STUDIOS is not open, Respondent raises two irrelevant points in an effort to argue that Complainant does not possess rights in the trademarks.  Respondent asserts that because Paisley Park has been described as a former Warner Bros. label that is now “defunct,” Complainant does not have trademark rights in PAISLEY PARK STUDIOS or PAISLEY PARK.  Whether Warner Bros.’ Paisley Park record label is active or defunct (and, similarly, whether Prince’s current record label is called “NPG”) is wholly irrelevant to this proceeding and whether Complainant has common-law or registered rights in PAISLEY PARK STUDIOS and PAISLEY PARK. 

Lastly, Respondent tries to cast doubt on Complainant’s United States trademark registrations for PAISLEY PARK by pointing out that Respondent was not able to find any “indication that [this mark] has ever been used in practice.”  However, a more persuasive authority, namely the United States Patent & Trademark Office, has accepted Complainant’s evidence demonstrating that Complainant has used the PAISLEY PARK marks.  In order to obtain these registrations, Complainant had to submit evidence that it made “use” (in the trademark sense, that is, offered goods or services to the public under this mark) of these marks.  Moreover, PAISLEY PARK (No. 2,150,287) achieved incontestability status in 2004, meaning that Complainant submitted, and the USPTO accepted, evidence of use of the mark in early 2004.  Clearly Complainant has used and is using the PAISLEY PARK mark in connection with the goods listed in the registration.  Complainant’s United States trademark registration for PAISLEY PARK (No. 2,150,287) is conclusive evidence of Complaint’s trademark rights, and PAISLEY PARK and Design (No. 2,150,301) is prima facie evidence of such rights.

In sum, Respondent has failed to counter the evidence that Complainant has common-law and registered trademark rights in PAISLEY PARK STUDIOS and PAISLEY PARK, respectively.  Since Respondent has not contested the fact that these marks are confusingly similar to the <paisleyparkstudios.com> domain name, Complainant has therefore satisfied this prong in the analysis.

Respondent has no rights or legitimate interests in respect of the domain name. 

 

Respondent holds no rights or legitimate interests in the <paisleyparkstudios.com> domain name.  Respondent does not deny that he has failed to make a bona fide offering of, and failed to make any demonstrable preparation to offer, goods or services under the PAISLEYPARKSTUDIOS mark or domain name.  None of the materials that Respondent submitted with his brief demonstrate use of Paisley Park Studios to identify his services, and Respondent has offered no excuse for not having used this domain name.  Furthermore, Respondent admits that he has not used the domain name, allegedly because he is busy, even though he has held the registration for 1.5 years.  Respondent has not even put up a placeholder to inform others of his intended use for the domain name, which constitutes further evidence that Respondent lacks any legitimate interest in <paisleyparkstudios.com>.  Respondent’s lack of rights or legitimate interest in the domain name warrants transferring the name to Complainant.

Respondent registered <paisleyparkstudios.com> in bad faith and the domain name is being used in bad faith.

 

Respondent had not rebutted the evidence of his bad faith registration and use of the domain name.  First, to explain his selection of <paisleyparkstudios.com> as a domain name, Respondent only offers the utterly implausible assertion that he chose to combine the words “paisley” “park” and “studios” as the name for bioregional planning work services.  Given that “paisley” is commonly associated with a fabric design (as Respondent admits), a “park” is a tract of land set aside for public use (American Heritage Dictionary, Second College Edition), and a “studio” is an artist’s work room or a room or building where tapes and records are recorded (American Heritage Dictionary, Second College Edition), it defies belief that Respondent selected Paisley Park Studios to identify his alleged bioregional planning work.  How does Paisley Park Studios represent “‘creation, cornucopia or abundance, and the conservation of nature through design, or Earth stewardship” as Respondent claims?  The fact that Respondent has apparently never used “Paisley Park Studios” in connection with his services may constitute an acknowledgment that the name bears no relation to his services.

Second, even if the panel were to accept Respondent’s assertion that he did not have actual knowledge of Complainant’s marks (which is unlikely), Respondent had constructive knowledge of the PAISLEY PARK marks by virtue of Complainant’s United States trademark registrations, and therefore registered the domain name with knowledge of Complainant’s trademark rights.

Third, Respondent’s admitted failure to use the domain name is evidence of his bad faith.  Pueblo Int’l, Inc. v. xtra-Net Internet Service GmbH, FA 94975 (Nat. Arb. Forum July 17, 2000). 

Fourth, to Complainant’s knowledge, Respondent failed to respond to Complainant’s correspondence about the domain name, further evidence of bad faith.  See Pueblo Int’l, Inc. v. xtra-Net Internet Service GmbH, FA 94975 (Nat. Arb. Forum July 17, 2000).  Although Respondent claims to have responded to one of the letters that Complainant’s attorneys sent to him, no such response was ever received by Complainant or its attorneys.  Complainant has never misled the Panel on this point, as Respondent has claimed.  Moreover, Respondent has not submitted an actual copy of his alleged response or any evidence that it was mailed.  Also, Respondent did not attempt to communicate with Complainant when he knew or should have known that Complainant did not receive his alleged response.  Respondent’s letter was dated October 18, 2004, the day before Complainant’s attorneys sent their second letter to Respondent in which the attorneys indicated that they had not received a response from Respondent.  Presumably Respondent received Complainant’s attorneys’ second letter after he had sent his response, yet, incredibly, Respondent ignored the attorneys’ express request that Respondent call.  If Respondent truly wanted to explain his position to Complainant, his receipt of a letter reflecting the non-receipt of Respondent’s correspondence would have prompted Respondent to contact Complainant’s attorneys.  (Respondent had Complainant’s attorneys’ mail and email addresses, and telephone and fax numbers, so could easily be reached if Respondent had desired to do so.)  Yet Respondent does not deny that no such efforts were made. 

In sum, Respondent has registered the <paisleyparkstudios.com> domain name in bad faith and the domain name should be transferred to Complainant.

D.  Respondent’s additional submission.

 

Complainant maintains that “PAISLEY PARK STUDIOS is famous throughout the world.”

 

The claim to fame of Paisley Park and Paisley Park Studios has been laid to rest. These names clearly do not have the name recognition that Complainant claims. It's a defunct record label and a recording studio that has largely been closed since 1996. How famous can that be?

 

Complainant claims that it is “unlikely” that I was not aware of Complainants clamed trademarks.

 

I registered <paisleyparkstudios.com> to use with my environmental design and environment education projects.  In my registration of <paisleyparkstudios.com> there was no knowledge, no idea, no connection between Prince, any name associated with Prince, any company, organization or facility associated with Prince, or anything to do with Prince in any way, nor with the music industry. Prince was a complete zero in the registration of <paisleyparkstudios.com>.  I am no fan of Prince. I have never had any of his music, or saw his movie, or known much of anything about him.  I've seen Prince mentioned in the news numerous times, but there was no mention of Paisley Park or Paisley Park Studios.

 

Complainant does not have exclusive use of the name “Paisley Park.” Other people use the name “Paisley Park,” and have the right to do so, if they are not using the name in connection with the goods or services listed in Complainant's claimed trademarks.

 

The Yellow Pages online (<switchboard.com>) lists these businesses, a delicatessen, apartment, and hair salon, with the name “Paisley Park.”

 

Paisley Park

827 Lexington Avenue

Mansfield, OH 44907-1920

Phone: (419) 756-3357

Fax: (419) 756-3797

http://www.Paisley-Park.com

Cuisine: Delicatessen

Services: Lunch, Banquet Facilities, Take Out/Carry Out, more...

Business Types: Caterers, Banquet Rooms, Miscellaneous Personal Services, more...

 

Paisley Park Apartments

1120 South Ave Apt C1

Forest Park, GA 30297-3903

Phone: (404) 361-4410

Business Types: Apartments

 

Paisley Park Hair Salon

7295 Highway 85 Ste 202

Riverdale, GA 30274-2966

Phone: (770) 991-2793

Business Types: Beauty Salons

 

Clearly, none of these businesses are in violation of Complainant's claimed trademarks. These businesses are not using the name “Paisley Park” in connection with the goods or services listed in Complainant's claimed trademarks, and neither am I.

 

Complainant's claimed trademarks only gives Complainant rights to use PAISLEY PARK and PAISLEY PARK STUDIOS in connection with the goods or services listed in Complainant's claimed trademarks (products and services related to recordings and recording studio services). Therefore I have the right to use “Paisley Park Studios” and <paisleyparkstudios.com> for my intended purposes of conservation, environmental design, and environmental education.

 

My use of the term “Paisley Park Studios” has ancient roots in natural design, and that is precisely why I chose it.  Complainant claims as "utterly implausible" my combination of the words paisley-park-studios to describe conservation and environmental design (bioregional planning).  Complainant uses Paisley Park to refer to a recording studio, which cannot plausibly be defined as a Paisley Park.

 

Complainant asks: “How does Paisley Park Studios represent ‘creation, cornucopia or abundance, and the conservation of nature through design, or Earth stewardship?’”

 

This argument is especially appalling in light of the fact that this lawyer represents an artist.  The nature of symbols is the pondering of their meaning. Instead of seeing the meaning of things, Complainant has taken the position of distorting the meaning of things.

 

Paisleys are artistic designs that symbolize nature, creation, cornucopia, and diversity, and that easily translates to the conservation of nature through design.

 

Dictionaries don't say much about the paisley.   So, I present quotes from the Internet in an exhibit, together with my comments, which should help cast light on this debate.

 

I also included notes on the cornucopia, which is a sister symbol of the paisley.

 

It's easy to see why I chose the paisley to represent my environmental design and environmental conservation work.

 

Here are some comments about symbols that I sent to someone recently:

 

“It's often said in the advertising business, ‘Image is everything.”  An article in the news discussed Waco's need to create a new image for itself before it can meet its high-tech potential.  I was already working on that before I read that article, and have developed many ideas.  My work is all about image.  That's all I've ever thought about: images and symbols. Symbols are very powerful.  Image is what sells products.  I'm trying to create images to inspire humanity to buy our potential, rather than leaving it sitting on the shelf. Image is how you inspire and motivate people.  Image is the framework on which everything is built.”

 

Complainant's selection of the most shallow dictionary definitions for “paisley” and “park” to refute my use of Paisley Park Studios is shallow and corrupt.  Paisley designs are inherently symbolic of nature and creation. Parks are designed and engineered. In a stylized sense <paisleyparkstudios.com> describes a nature park design studio. These terms are highly appropriate for my use, but if you apply Complainant's own dictionary criteria to a recording studio, it sounds more like a sewing factory, and makes no sense at all.

 

The paisley is all about natural design.  The <paisleyparkstudios.com> domain name represents sustainable ecological design.

 

Complainant's selected definition for park is deliberately corrupted. Parks are designed and engineered. Park designs are specialized fields of engineering. Design is the underlying feature, whither it's a nature park, industrial park, business park, urban park, amusement park, fair park, sports park, ski park, skate park, or swim park.

 

Botanical gardens are parks. There are gene parks, fruit parks, biotech parks, agro-parks, wildlife parks, forest parks, desert parks, ocean parks, research parks, innovation parks, technology parks, medical parks, science parks, discovery parks, wind parks, energy parks, venture parks, adventure parks—just to name a few. For my purpose, park has just as much meaning as the paisley.

 

Here is a park that is particularly relevant to this case: <aerospacepark.com>.

 

I registered <aerospacepark.com> and <hostoftexas.com> two months, <itvillage.com> three months, and <locationx3.com> five months, before I registered <paisleyparkstudios.com>, and I'm not using any of those names yet either! But I did draw up an outline for using them a few weeks ago. Complainants claim that I registered <paisleyparkstudios.com> in bad faith because I am not using it is pure folly. And here are four examples of how foolish that claim is. Here are four domain names that were registered months before I registered <paisleyparkstudios.com>, and they are not being used yet either.

 

Those names were all registered to use for my "Image Waco" project to create a new image and public relations campaign for Waco, the same way I registered <paisleyparkstudios.com> to use for my environmental design and environmental education projects. And there is a connection to all of these projects.

 

I have enclosed the ideas I drew up recently to use <aerospacepark.com>, <hostoftexas.com>, <itvillage.com>, and <locationx3.com>. These four names were registered months before I registered <paisleyparkstudios.com>. I have not used them, and I only recently began drawing up an outline for using them. These are three parts of a much larger "Image Waco" project to create a new image and public relations campaign for Waco and central Texas. There are 17 elements in the Image Waco project, so far. The element I'm working on now is called "Design Science Revolution." There is a conservation and environmental design connection to the Image Waco project, which is not readily apparent in the four elements I have enclosed. The Image Waco project is designed to lead into elements related to conservation and environmental design, particularly housing, global computer simulations, a global bioregional information and technology exchange, the New Apollo Project (ApolloAlliance.org, economic analysis conducted by a Waco economist, Ray Perryman) and other issues.

 

More recently I registered <greencitydesign.com>, which is part of the Waco Image project. The <greencitydesign.com> project is also part of my environmental design and environmental education projects, for which purpose I registered <paisleyparkstudios.com>.  I enclosed the outline I have written for the GreenCityDesign.com project, as an example of the work for which I registered <paisleyparkstudios.com>.

 

One of the famous sayings of Buckminster Fuller is: “Rule 1: Never show half–finished work.”  I'm working hard on these things, and a whole lot more, and I certainly intend to move this stuff to the Internet, but I am working on broad concepts, and the Internet has not been a focus so far.  I'm also not good at computers and webmastery.  I prefer to focus on my limited time on what I am good at.  The examples of my work that I have presented are only a tiny fraction of what I'm working on, and none of it is on the Internet.  That doesn't give Complainant any rights to my domain names.

 

I don't think the following has much bearing on this case, but I feel obligated to respond to it.

 

Complainant is deliberately creating confusion regarding the letter that I sent to Complainant, weeks before this UDRP Complaint was filed. A reading of the note appended to the top of the letter clearly indicates that the letter was mailed after I received Complainant's second letter.  It starts by saying "I am in receipt of your second letter." And then states when the letter was written: "I wrote this soon after I received your first letter, and then put it aside". The date on the letter is the date the letter was written, not the date it was mailed. A lawyer should have the intelligence to easily discern this, and truly, I believe Complainant does discern this, but is creating confusion.

 

Either Complainant is confused or is trying to create confusion. Complainant states "Respondent did not attempt to communicate with Complainant when he knew or should have known that Complainant did not receive his alleged response."

 

It didn't happen this way, but according to Complainant, I sent a letter, and then shortly thereafter, received another letter from Complainant stating that Complainant had not received a reply from me.  If it had happened that way, I would have naturally assumed that our letters had crossed in the mail, and that Complainant would receive my second letter shortly.  It doesn't really matter, because that is not how it happened. I sent my letter after receiving Complainant's second letter, not before.

 

Complainant says, “Respondent has not submitted an actual copy of his alleged response or any evidence that it was mailed.”  I don't know what Complainant accepts as and "actual copy", but Complainant has obviously read the copy of the letter that I submitted to the forum.

 

The letters that Complainant sent to me were not certified, and neither was mine. I sent the letter, they almost certainly received it, but they are claiming that I didn't send it, and that this is evidence of bad faith. Isn't that convenient.

 

Complainant states “incredibly, Respondent ignored the attorneys’ express request that Respondent call.”  What's incredible about that? I'm not beholden to these people. They want to act like I owe them something. I owe them nothing.  And that’s the attitude I had when I receive their letter.  Their letter is dated Oct. 4, and they gave me till Oct. 8 before they initiate legal proceedings against me.  A letter like that from a big lawyer for Prince is not going to intimidate a born and bred country boy from Texas.  But it will get you laughed at.

 

I have demonstrated my rights to <paisleyparkstudios.com>. The Respondent respectfully requests that the Administrative Panel denies the remedy requested by the Complainant.

 

FINDINGS

            The Panel makes the following findings:

 

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

the Respondent has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

 

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

 

the Respondent has no rights or legitimate interests in respect of the domain name; and

 

the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant established rights in the PAISLEY PARK mark by registering it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,150,287 issued April 14, 1998).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that Respondent has the burden of refuting this assumption).

 

Additionally, Complainant acquired common law rights in the PAISLEY PARK STUDIOS mark through operation of its studio complex opened outside Minneapolis, MN since 1987.  Complainant’s PAISLEY PARK STUDIOS provides recording and rehearsal studio services and film production and editing services.  The studios have become known throughout the world as a state-of-the-art recording and film studio and famous musicians, including REM, Barry Manilow and the Bee Gees have recorded there.  The studio hosted an open house this past summer for many audio and video companies indicating it was “open for business” – once again.  The studios were open consistently and have never shut down, although during the period from 1996 until the first half of 2004, only Prince and third parties he specially invited used the studio (meaning third parties could not rent studios without Prince’s invitation).  Complainant’s use of the PAISLEY PARK STUDIOS mark is sufficient to find secondary meaning and to establish common law rights in the mark.  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that Complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).

 

The <paisleyparkstudios.com> domain name registered by Respondent is confusingly similar to Complainant’s PAISLEY PARK mark because the domain name incorporates Complainant’s mark in its entirety, adding only the generic term “studios.”  The mere addition of a generic term to Complainant’s registered trademark is insufficient to distinguish the domain name from the mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).

 

Respondent’s <paisleyparkstudios.com> domain name is identical to its PAISLEY PARK STUDIOS mark because the disputed domain name differs from the mark only by the addition of the generic top-level domain (gTLD) “.com.”  The addition of a gTLD is irrelevant meaning the domain name is identical to the mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

 

Rights or Legitimate Interests

 

Policy ¶ 4(c) provides a list of three factors for the Panel to consider if Respondent has acquired any rights or legitimate interests to the domain name:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent is not commonly known by the <paisleyparkstudios.com> domain name (nor does it claim to be).  Complainant has not authorized Respondent to make any use of its PAISLEY PARK or PAISLEY PARK STUDIOS marks.  Respondent has not established rights in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

 

Respondent has not made any use of the <paisleyparkstudios.com> domain name and the domain name has remained inactive since its registration (there is a conflict in the record about the actual registration date), more than a year before the filing of the Complaint.  Respondent’s failure to use the disputed domain name constitutes passive holding and is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).  While it is not necessary for Respondent to use the domain name for a web site, the domain name should be used for some purpose to avoid a finding the domain name was being passively held.

 

Respondent has made no demonstrable preparations to use the domain name in some fashion , pursuant to Policy ¶ 4(c)(ii).  While he claims to be working on the project, he provides no evidence of the fact.

 

Once Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

 

Respondent has not met his burden.

 

Respondent’s suggestion other people have rights to the name “Paisley Park” is unavailing.  The question under a UDRP proceeding is not whether a hypothetical respondent might have sufficient rights or legitimate interests in the domain name to defeat this Complainant, but whether this Respondent has sufficient rights or legitimate interests in the domain name to defeat this Complainant.  This Respondent does not.

 

 

Registration and Use in Bad Faith

 

UDRP Policy ¶ 4(b) has a non-exclusive list of four factors that can be considered to determine bad faith:

 

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

 

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

Additional factors and circumstances can also be used to support findings of bad faith registration and use.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Respondent’s failure to use the <paisleyparkstudios.com> domain name for more than a year since its registration in 2003 is some evidence of bad faith registration and use.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Respondent had knowledge of Complainant’s PAISLEY PARK mark at the time Respondent registered the <paisleyparkstudios.com> domain name because this is an incontestable mark registered with the United States Patent & Trademark Office.  As such Respondent is presuimed to have knowledge of the mark and the fact it is registered whether or not Respondent actually has such knowledge.

 

The Panel will not re-examine the USPTO’s decision to register a trademark.  See Opus Northwest Constr. Corp. v. Opus Realty, FA 318960 (Nat. Arb. Forum Oct. 19, 2004); see also MGW Group, Inc. v. Gourmet Cookie Bouquets.com, FA 273996 (Nat. Arb. Forum Aug. 16, 2004); see also RMT, Inc. v. Domain Finance Ltd., FA 313843 (Nat. Arb. Forum Nov. 3, 2004).  Respondent has avenues available to redress such decisions and it has not taken advantage of them.

 

Respondent’s argument Complaintant’s studio was closed must be rejected.  Complaintant filed an affidavit of use with the USPTO, dated Janaury 26, 2004.  Respondent did not object to that affidavit.  More importantly, the USPTO accepted the affidavit, making the mark incontestable.  That affidavit claimed the registered mark was in use for 5 consecutive years.  This Panel will not review the veracity of that affidavit.  The Panel also declines to review the USPTO’s decision to accept the affidavit and declare the trademark incontestable. 

 

Respondent also must have had knowledge of Complainant’s PAISLEY PARK STUDIOS common law mark at the time Respondent registered the <paisleyparkstudios.com> domain name, even if Respondent did not listen to Prince’s music or watch Prince’s movie.  The common law mark is simply too close to the registered mark to be ignored.  Respondent had actual or constructive knowledge of Complainant’s rights in its marks and that registration of a domain name containing these marks is evidence of bad faith regitration and use pursuant to Policy ¶ 4(a)(iii).  See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

 

DECISION

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

 

Accordingly, it is Ordered that the <paisleyparkstudios.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry
Dated: Tuesday, February 1, 2005

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