The Complainant is “Sam Ash Music Corporation”, of Hicksville, New York, United States of America (“Complainant”), represented by Katten Muchin Rosenman LLP, Madison Avenue, New York, New York, United States of America.
The Respondent is Spiral Matrix, of Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name is <samashguitar.com>, registered with Intercosmos
Media Group, Inc., d/b/a directnic.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2006. On May 17, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 17, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2006.
The Center appointed Fernando Triana, Esq., as the
sole panelist in this matter on June 29, 2006. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
The Complainant is a corporation organized under the laws of the State of New York, United States of America, with principal place of business in Hicksville, New York, United States of America. The Complainant is a retailer of musical instruments, sheet music, accessories, audio equipment, among other related products. The Complainant has been in the market since the 1924.
The Complainant registered before the United States Patent and Trademark Office “USPTO” the trademark SAM ASH to cover goods and services of International classes 16, 25, 41 and 42 on March 4, 1986, of International class 36 on December 5, 1995, and of International class 9 on May 4, 2004 and May 19, 2005; SAMASH.COM to cover goods and services of International classes 35, 38, 41 and 42 on July 13, 1999; SAM ASH MUSIC to cover goods and services of International classes 35 and 41 on October 31, 2000; SAM ASH QUIKSHIP to cover services of International class 35 on February 11, 2003. (Collectively, the “SAM ASH Family of Marks”).
The Complainant has registered over 7 domain names bearing its trademarks with different combinations of “SAM ASH” and gTLD, including <samashguitars.com>.
The Respondent registered the disputed domain name
<samashguitar.com> with Intercosmos Media Group, Inc., on April 7, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the Respondent registered the domain name <samashguitar.com> bearing a name identical to the Complainant’s SAM ASH Family of Marks, thus making an illegitimate registration and use in bad faith of the same, in accordance with the Rules and Policy.
The Complainant states that the trademark SAM ASH is famous and representative of the goods and services offered by Sam Ash Music Corporation. Noteworthy of such distinctiveness is the use and promotion of the SAM ASH Family of Marks in the market and on its Internet websites at its various domain names, which also incorporate its trademarks.
Attesting the similarity between the domain name and the Complainant’s trademarks, i.e., <samashguitar.com> and the SAM ASH Family of Marks, the Complainant states that these are identical and lead to confusion the potential Internet purchasers. This, since the domain name in conflict incorporates in its entirety the SAM ASH Family of Marks.
Additionally, the Complainant asserts that the Respondent has no legitimate rights and/or interests in respect of the disputed domain name and in consequence, the rights derived from the prior registration of its trademarks should prevail. This, taking into account that the Respondent attempts to attract for commercial gain Internet users to its website, believing it to be sponsored by or affiliated with the Complainant’s well-known SAM ASH goods and services, by using a domain name identical to the Complainant’s registered Family of marks and misdirecting them to advertising sites.
Furthermore, the Complainant states that the Respondent has not made demonstrable preparations to use the <samashguitar.com> domain name in bonafide, nor has been personally identified, or commonly known by the name SAM ASH.
The Complainant sent a cease and desist letter to the Respondent on April 25, 2006, demanding the same to cease the unauthorized use of the SAM ASH name and transfer to the Complainant the domain name <samashguitar.com>. However, the Respondent did not respond.
The Complainant alleges that there was bad faith on the part of the Respondent when registering the domain name, as it began use of the term SAM ASH when this expression was already registered as a trademark, used in the market and had acquired distinctiveness and secondary meaning. Furthermore, the Complainant states that the Respondent was aware of Complainant’s rights prior to acquiring the domain name.
The relief sought by the Complainant is for the Panel to order the transfer of the disputed domain name <samashguitar.com>.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules for Uniform Domain Names 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.”
Likewise, paragraph 10 (d) of the Rules provides that: “[t] he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
This Panel considers worth mentioning that the evidence filed to prove the assertions made has been thoroughly studied in order to determine its relevance and weight in arriving at a decision. The Panel clarifies that the statements that have been accompanied by evidence have been given more weight than mere assertions made without further demonstration to its existence.
The Panel points out that the Respondent did not dispute or respond to any of the Complainant’s assertions, thus it will make its decision based on the principles and legal grounds established on the Rules, the Policy and Supplemental Rules.
The Panel shall therefore proceed to a decision based on the facts and evidence attached to the Complaint, per paragraphs 5(e) and 14(a) of the Rules. Furthermore, paragraph 14(b) of the same Rules states that the Panel is empowered to draw such inferences from Respondent-s default as it considers appropriate.
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; and
(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.
A. Identical or Confusingly Similar
The Complainant filed printed evidence of the results provided by the TARR web server of the United States Patent and Trademark Office (USPTO), of its registered trademarks SAM ASH, SAMASH.COM, SAM ASH MUSIC and SAM ASH QUICKSHIP, as word marks.
The trademark SAM ASH is registered to identify, inter alia: “speaker cabinets, electronic sound modification units and amplifiers”; “paper goods, namely music manuscript books and sheet music paper”; “clothing and namely tee-shirts”; “credit card services”; “educational services and namely conducting classes in music”; and “retail store services in the field of musical instruments and related accessories, and rental of musical instruments”; goods and services of International Classes 9, 16, 25, 36, 41 and 42, respectively. This mark is registered under Certificate No. 2839116 dated May 4, 2004; Certificate No. 2971283 dated July 19, 2005; Certificate No. 1939950 dated December 5, 1995; and Certificate No. 1385208 dated March 4, 1986, respectively.
The trademark SAMASH.COM is registered to identify, inter alia: “dissemination of advertising for others of musical instruments an related accessories via an on-line electronic communications network”; “providing electronic mail and messaging services via worldwide computer network”; “educational services, namely, providing courses of instruction in the field of music theory and in the use of musical instruments via global computer network, and on-line rental services of musical instruments and related accessories”; “computerized on-line retail and rental services in the field of books, magazines, music manuscripts, sheet music and clothing, namely, T-shirts, and providing access via worldwide computer network to a bulletin board containing information relating to music theory and training in the use of musical instruments and related accessories”; “general merchandise catalogs featuring musical instruments and accessories”; goods and services of International Classes 35, 38, 41, 42 and 16, respectively. This mark is registered under Certificate No. 2261293 dated July 13, 1999 and Certificate No. 2395451 dated October 17, 2000, respectively.
The trademark SAM ASH MUSIC is registered to identify: “catalog services featuring musical instruments and accessories”; services of International Class 35. This mark is registered under Certificate No. 2685048 dated October 31, 2000.
The trademark SAM ASH QUICKSHIP is registered to identify: “catalog services featuring musical instruments and accessories”; services of International Class 35. This mark is registered under Certificate No. 2685048 dated February 11, 2003.
The Respondent did not contest the existence of the aforementioned trademarks or their registration by the Complainant, and the Panel accepts the Complainant’s trademark rights in these marks as established.
In the present case, the Panel considers that when making the study of similarity between the registered trademarks of the Complainant and the disputed domain name there are several criteria that should be considered, such as: a) likelihood of confusion b) visual similarity between them that can create misunderstanding; and c) distinctiveness of the part that is different between them;
Based on the foregoing, the Panel proceeds to make the following examination according to the parameters established above in order to determine whether or not the Complainant’s registered trademarks and the disputed domain name are confusingly similar:
Letter No. 1
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Letter No. 10
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Letter No. 12
Letter No. 13
Letter No. 14
Letter No. 15
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Identical
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Identical
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Different
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Different
Regarding the visual similarity aspect, the Panel considers that the compared marks and the disputed domain name have the same prefix “sam ash” that is also the main part of them. Consequently, they share the entire part of a registered trademark, and the most important part of the other three (3) of the Complainant’s registered trademarks. When the same are compared as a whole, the visual similarity between them is evident.
Regarding the distinctiveness aspect, it is the belief of this Panel that the suffix “guitar” added by the Respondent does not make the disputed domain name significantly different from the Complainant’s trademarks. The addition of the suffix GUITAR is not sufficient in the present circumstances to give to the domain name enough distinctiveness from the Complainant’s registered trademarks.
Also, the Panel finds that in the present case, the combination and use of the words “samashguitar” in its whole is confusingly similar in the visual aspect to the trademarks SAM ASH, SAM ASH.COM, SAM ASH MUSIC and SAM ASH QUICKSHIP. This, since the words “samash” are the predominant part of the disputed domain name, and the words most likely to be entered by an internet user-seeking SAM ASH goods and services.
Moreover, taking into account that it is the unit of the signs that the possible purchasers visualizeand tend to remind, and that the expression guitar, a descriptive word for musical instruments, its use together with the registered trademark SAM ASH does not create sufficient distinctiveness to avoid the probability of confusion. Therefore, the consumer public is likely to be misled regarding the real origin of the guitars for which they may be searching on the Internet. In Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,1 the Panel stated that:
“It is clear that the Domain Names incorporate,
as their first part, the word TELSTRA. Given the finding above the question
arises whether the addition of a descriptive or generic element to the trademark
is sufficient to render it distinguishable. Complainant refers to the previous
WIPO decision Quixstart Investments Inc. v. Dennis Hoffman, WIPO
Case No. D2000-0253where the panel found that theaddition
of generic words to Complainant’s mark was not sufficient to escape the
finding of similarity. Likewise, Complainant referred tothe WIPO
decision Chermo Communications Inc. v. Jonathan Dennis Kimball, WIPO
Case No. D2000-0119, that the placement of hyphens is also irrelevant
in determining confusing similarity.”(Underlined added.)
In a very similar case, Donald J. Trump and Trump Hotels & CasinoResorts In. v. Sports Management,2 the Panel stated:
“Complainant, through registration and use has established that it has rights in the TRUMP PLAZA mark. Furthermore, Respondent’s <trumpplazasportsbook.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entirely of Complainant’s mark and merely adds the descriptive term “sports book”. The use of a descriptive term with a famous mark does not create a mark capable ofovercoming a claim of confusing similarity.”
In the present case, the addition of the generic word “guitar” is likewise insufficient to escape a finding of similarity. Also it has been repeatedly accepted by UDRP Panels that the generic top-level domain (gTLD), in this particular case the suffix “.com”, is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant’s trademarks and the disputed domain name. See for example, Kudos Information Limited, Kudos Information, Inc., v. Kudos Systems, Keith Pearson,3 where it was stated that:
“The domain name <kudos.com> is identical to the trademarks in which the Complainants have rights as the global top level domain name identification <.com> has no distinctive function.”
For the foregoing reasons, the Panel finds that the disputed domain name is confusingly similar to the registered trademarks of the Complainant.
Therefore, this Panel finds for the Complainant has succeeded to prove the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It has been pointed out by this Panel that the Respondent is in default in accordance with the parameters established by the Policy and the Rules, and Supplemental Rules.
However, this Panel did not draw any inferences from the default other than those that have been thoroughly proved or which can fairly be inferred from the evidence attached by the Complainant.
Paragraph 4 (c) of the Policy determines that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall demonstrate the Respondent’s rights or legitimate interests to the domain name:
(i) Before any notice to Respondent of the dispute, it has used or made 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
In regard to paragraph 4 (c)(i) and (ii) of the Policy, there is no evidence before the Panel of the Respondent’s use or preparation to use the disputed domain name in connection with a bona fide offering of goods or services nor has it been evidenced or can be inferred plausible proof that the Respondent’s business is commonly known by the domain name.
On the contrary, the Complainant has evidenced the use of its four (4) registered trademarks related with offering goods and services derived from its musical business. It has also been evidenced that the Complainant has over six registered domain names, bearing the SAM ASH Family of trademarks and/or related names. The Panel also accepts that the Complainant, as stated, has not authorized the Respondent to use any of its marks.
The Complaint has also evidenced, as verified independently by the Panel when visiting the Respondent’s website on July 10, 2006, that the domain at issue leads to what appears to be a parked web page that contains a web page containing what appears to be sponsored links to other domain names where products and services related to guitars, among other musical products, are offered. Additionally, there are other links of different categories that are unrelated to guitars, and to musical products and services.
There is no evidence before the Panel the Respondent’s intentions to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. See for example, Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano.4
Nor in the present case is there any evidence before the Panel to suggest that the Respondent is either connected to or affiliated with the Complainant’s business. It is neither a licensee nor has it been authorized to reproduce the registered trademark SAM ASH property of the Complainant, when it registered its domain name.
In the case The Royal Bank of Scotland Group plc v. TRB,5 the panel set forth that:
“Complainant contends that there is no evidence that Respondent has ever been commonly known by the <royalbankscot.com> domain name. Furthermore, Complainant has not licensed or authorized Respondent to use any version of the ROYAL BANK OF SCOTLAND mark. Respondent has not come forward with any evidence to challenge Complainant’s assertions. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the dispute domain name pursuant to Policy 4(c)(ii).”
The Panel considers this reasoning applicable in the present case.
In sum, the Panel considers that the Complainant has established a prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain name. This has not been rebutted by the Respondent. Nor is there any other evidence or circumstances apparent to the Panel indicating that the Respondent has rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds for the Complainant in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances indicating that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances indicated that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Circumstances indicating that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 his website or location or of a product or service on his website or location.
The Complaint specifically argues the applicability of paragraph 4(b)(iv) of the Policy. As evidenced in the Complaint, the representative of the Complainant sent both electronically and by first class mail, to the Respondent, on April 25, 2006, a cease and desist letter demanding the immediate end of the use of the name and trademark SAM ASH, and the cancelling or transferring the disputed domain name to the Complainant. The Respondent ignored this request. Consequently, the Panel considers that the Respondent continued use of the disputed domain name with full knowledge of the SAM ASH Family of Marks, to be strong evidence of bad faith registration and use.
The fact that the Respondent ignored the request of ceasing and desisting from the non-authorized use of the domain name has been also addressed by other Administrative Panels. For instance, the Panel in eBay Inc., v. Sunho Hong,6 considered that:
“Respondent has ignored Complainant’s request to transfer ownership of the domain name. Failure to positively respond to a complainant’s efforts to make contact provides “strong support for a determination of bad faith registration and use.”
In the case Nintendo of American Inc. v, Garret N. Holland et al,7 the Panel stated that:
“Moreover, despite Complainant’s efforts to persuade Respondent to cease its unauthorized use of the Character Name Marks, Respondent has continued to violate Complainant’s trademark rights.
These facts are sufficient to support a finding of bad faith beyond the four nonexclusive criteria set forth in the Policy paragraph 4(b).”
As an additional fact, even though the Complainant contacted the Respondent by mail and e-mail, sending a cease and desist letter, the Respondent did not execute the transfer. This behavior is considered by this Panel as additional evidence of bad faith of the Respondent.
For instance in the case Nike Inc., v. Azumano Travel,8 it was stated that:
“A third factor is Respondent’s refusal to voluntarily
transfer the contested Domain Names. Failure to positively respond to a
complainant’s efforts to make contact provides "strong support for
a determination of ‘bad faith’ registration and use." Encyclopaedia
Britannica v. Zucarini, D2000-0330
(WIPO June 7, 2000).
The Panel also verified independently when observing the Respondent’s website, that there is no link, product and/or service that is identified with the expression SAM ASH, nor with any other expression similar to it. This leads the Panel to believe that the Respondent uses its domain name for diversion of potential purchasers, thus taking advantage of the Complainant’s reputation to enhance its won business, and thereby tarnishing the Complainant’s interests and “good will”.
Given the evidence, the Panel accepts as plausible the argument that the Respondent registered the domain name <samashguitar.com> solely for the purpose of misappropriating the goodwill of the Complainant’s mark. Although there is no response, the Panel accepts as probable that the Respondent deliberately decided to register and use the disputed domain name because of the prospect of confusion with the Complainant’s mark and the likely perception of affiliation or endorsement by the Complainant of the Respondent’s site.
In the case Associates Materials, Inc. d/b/a Alside v. Perma Well, Inc. a/k/a Robert Biser,9 the Panel held:
“Respondent has actual knowledge of Complainant’s rights in the ULTRAGUARD mark. (…) Respondent is on notice of its own lack of rights; thus, Respondent’s registration of the <ultraguardfence.com> domain name despite this actual notice is evidence of bad faith registration. See Digi Int’lv v. DDI Sys., FA 124506 (Nat. Arb. Forum October 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”).”
In the present case, it is not plausible that due to a coincidence, the Respondent chose the particular domain name without prior knowledge of the Complainant’s industrial property rights over its SAM ASH trademarks. This is particularly so, taking into account that the same has been registered since 1986, and its owner is using this sign in the musical industry since 1924.
The panel in America Online Inc. v. Avrasya Yayincilik Danismanlik Ltd.10 found out the following in similar circumstances:
“12. Respondent’s bad faith is evidenced by the fact that it registered “americanonline.com” on August 21, 1997 and “americaonline.net” on June 11, 1998, long after Complainant’s adoption and first use of the mark AMERICA ONLINE and long after the mark was registered in Turkey and the United States, and Respondent, thus clearly had knowledge or reasonably should had have knowledge of Complainant’s prior adoption, usage and registration of Complainant’s well-known mark”.
In the present case, the Respondent’s bad faith is also evidenced by the fact that the disputed domain name appears to offer information and links to the Complainant’s competitors, which demonstrates that the Respondent may also be intentionally attempting to disrupt the business of the Complainant.
A very important additional fact, as evidenced by the Complainant and uncontested by the Respondent, the latter has displayed a pattern of registering domain names that incorporate marks of third parties.
This pattern of conduct of the Respondent was found in other cases where the panels decided against the Respondent, and declared that the same used third parties’s trademarks, acting in clear bad faith.
One example is Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Laba.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.11 where the panelist held that:
“The multitude of registrations and the content of the websites (including Porsche-related links) leave no doubt that the Respondents were aware of the Complainant’s trademarks but nevertheless decided to register and use confusingly similar domain names.”
See also for a further example, Société des Hôtels Meridien v. Spiral Matrix / Kentech Inc.12
Based on the previous cited cases in which the Respondent has been involved, the Panel concludes that the Respondent has engaged in a pattern of registering third parties’ trademarks as domain names, a conduct known as cybersquatting and also considered as evidence of bad faith.
Particularly in relation to domain names warehousing, or abusive registration, Jerome Gilson and Anne Gilson LaLonde13 said:
“Cyberpirates may attempt to warehouse multiple domain names containing other’s marks, sometimes hundreds or even thousands, and this factor permits a court to take such conduct into the consideration of whether a certain domain name was registered in bad faith. (…) Even if there is no working website corresponding to any of the warehoused domain names, warehousing prevents trademark owners from using those names for their business.”
The Panel likewise notes that, as further evidence of the Respondent’s bad faith, there is no disclaimer on the web page to which the disputed domain name resolves to warn visitors of the fact that such page is not associated with the Complainant, that there is diversion of potential clients and the tarnishing of the Complainant’s interests by the Respondent’s use of the disputed domain name, and that the Respondent has engaged in a pattern of cybersquatting.
Furthermore, the Respondent deliberately decided to register and use the disputed domain name on April 7, 2006. On the other hand, the Complainant proved that it has been using constantly and uninterruptedly its trademark SAM ASH, since 1924.
The foregoing considered, the Panel finds that the
disputed domain name is registered and used in bad faith, and that the Complainant
has met its obligations under the third element of the Policy.
7. Decision
For all the foregoing reasons, in accordance with
paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the
domain name, <samashguitar.com> be transferred to the Complainant.
13 “The Anticybersquatting Consumer Protection Act and the ICANN Uniform Domain Name Dispute Resolution Policy”. Trademark Protection and Practice. Lexis Publishing. 2000. New York, United States of America, p. 17.
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