Mar-a-Lago is a Florida Man’s Pet Memorial?
While the panel found that Respondent’s explanation for its registering the disputed Domain Name “strain[s] credulity”, it noted that the website content did provide at least some modicum of support. More importantly, the MAR-A-LAGO trademark registration submitted into evidence by the Complainant issued in April of 1997, one month after Respondent registered the disputed Domain Name. Read commentary.
We hope you will enjoy this edition of the Digest (vol. 3.48), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Mar-a-Lago is a Florida Man’s Pet Memorial? (mar-a-lago .com *with commentary)
‣ Abbreviation, “BT” is not Confusingly Similar to BODYTECH (bt-phamaceutical .com *with commentary)
‣ Does the WHOIS “Update Status”, Reflect the Change in Domain Ownership? (ibubble .com *with commentary)
‣ Respondent “Squalifies” to Keep Domain Name (squalify .com)
‣ “Tpbfico” Fails Side-by-Side Comparison Test (tpbfico .com)
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Mar-a-Lago is a Florida Man’s Pet Memorial?
DTTM Operations LLC v. Marq Quarius, 1 LLC, WIPO Case No. D2023-4147
<mar-a-lago .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is an affiliate of The Trump Organization that owns and controls trademarks on behalf of the group. Mr. Donald Trump used this site as a private residence until 1995 but later built an exclusive club, named “Mar-a-Lago Club” at the site. The Club is advertised in print and online at <maralagoclub .com> (registered on May 6, 1997). The Complainant holds United States trademark registration dated April 29, 1997, for THE MAR-A-LAGO CLUB as a word mark (first use: May 1994), as well as United States registration dated December 1, 2009, for MAR-A-LAGO as a word mark (first use: June 2008). Both of these marks were registered by Mr. Donald Trump and subsequently assigned to the Complainant. The disputed Domain Name was created on March 28, 1997 and currently redirects to a website headed “A Dreamer” (the “Dreamer website”) at <c13 .org>.
The Complainant alleges that the Respondent has registered and maintains the disputed Domain Name in bad faith with intent to cause confusion, for commercial gain, and to deprive the Complainant of using its famous trademarks as the domain name to promote his business. The Respondent asserts that the phrase “mar-a-lago”, which is Spanish for “sea to lake” (or lagoon), is used to refer to many places across the globe and not exclusively to the Complainant’s club in Palm Beach, Florida. The Respondent further contends that he registered the disputed Domain Name in March 1997, before the Complainant was using a similar domain name, after three family pets died, at his mother’s suggestion. The website later became a “pet memorial”, where others could also post pictures and names of their deceased pets, free of charge. The Respondent also points out that while the Complainant’s predecessor Mr. Trump did not register MAR-A-LAGO as a trademark until 2009, Mr. Trump attempted to take the disputed Domain Name from the Respondent on two occasions before this proceeding.
Held: The Respondent explains that he formed the disputed Domain Name from the nicknames of three recently deceased family pets. This might strain credulity, but there is evidence, if taken at face value, that the Respondent operated a website apparently dedicated to the memory of these particular animals, later expanding it to a pet memorial website for others as well. However, rights and legitimate interests are normally assessed at the time of the Policy proceeding (WIPO Overview 3.0, section 2.11), and the Respondent’s pet memorial website was replaced some years ago with the Dreamer website.
The Respondent registered the disputed Domain Name on March 28, 1997, while the Complainant obtained trademark registration for THE MAR-A-LAGO CLUB a month later, on April 29, 1997, claiming first use in commerce in May 1994. However, the Complaint does not include evidence of such early use to support common law rights before trademark registration. Whereas, the other and more relevant mark MAR-A-LAGO was not registered until 2009, claiming first use in commerce only in June 2008. Thus, only the mark THE MAR-A-LAGO CLUB is relevant at the time of the registration of the disputed Domain Name registration.
It is certainly possible that the Respondent, a Florida resident, was aware of the opening of Mr. Trump’s Mar-a-Lago Club, and the disputed Domain Name was registered “in anticipation of” a subsequently registered trademark. However, the disputed Domain Name here does not refer directly to THE MAR-A-LAGO-CLUB but is comprised of a shorter string of dictionary words, for which the Respondent offers an unusual but not altogether incredible explanation, given the actual use of the disputed Domain Name. Importantly, the Respondent has retained and used the disputed Domain Name for essentially non-commercial purposes for more than 25 years, without trying to sell it to the Complainant or third parties.
The Panel is aware that the account given by the Respondent as to his reason for having registered the disputed Domain Name may seem to be a stretch; to the extent this explanation could be fabricated and sought to mask an intent to cybersquat, ascertaining such fact would require detailed evidence and information – which if it was already available, was not provided in the Complaint – such as may be obtained in litigation discovery or cross-examination and is beyond the purview of the Panel here. The Panel does not find on this record that the Complainant has met its burden to establish bad faith in the registration of the disputed Domain Name in 1997, as an attack on a common law trademark or an anticipated registered trademark.
Complaint Denied
Complainants’ Counsel: 500law, United States
Respondents’ Counsel: Self-represented
Special Guest Case Comment by Panelist Mr Steven M. Levy:
Mr. Steven M. Levy, Esq. is the principal of the Accent Law Group, Inc. and is also a UDRP Panelist for the NAF, CIIDRC and the ADNDRC. The views expressed herein are Steven’s and do not necessarily reflect those of the ICA or its Editors. Steve is not affiliated with the ICA.While the panel found that Respondent’s explanation for its registering the disputed Domain Name “strain[s] credulity”, it noted that the website content did provide at least some modicum of support. More importantly, the MAR-A-LAGO trademark registration submitted into evidence by the Complainant issued in April of 1997, one month after Respondent registered the disputed Domain Name. As par. 4(a)(iii) of the Policy is stated in the conjunctive, where a domain name is registered prior to the existence of a complainant’s trademark rights, it typically cannot have been targeting the then non-existent mark in bad faith. Here, the MAR-A-LAGO resort and common law (“unregistered”) trademark existed long before the April 1997 registration but the Complainant’s counsel only submitted into evidence a copy of the registration certificate. The panel noted that “despite the fact that this is an important aspect of this case, the Complaint does not include evidence of such early use to support common law rights before trademark registration.” Surprisingly, no mention was made in the decision of the trademark application date which was, in fact, prior to Respondent’s acquisition of the domain name. This may have been an oversight by the Panel or perhaps Complainant’s counsel simply never asserted it.
Regardless, the bottom line is that the Complainant’s counsel did not submit truly critical and easily obtainable evidence of prior common law trademark rights. As it is widely accepted that UDRP complaints may not be re-filed unless there is new evidence that was not available at the time of the original complaint, the only option at this point is for Complainant to file a court action against Mr. Quarius. But maybe there’s a silver lining here as he could be placed on the witness stand, under oath, to see if his pet memorial story holds up under cross-examination.
As an aside, in response to a 2020 demand letter, Mr. Quarius offered to voluntarily transfer the domain name if DTTM would make a donation in his mother’s name, equal to the cost of the domain registration fees, to an animal welfare society. DTTM didn’t respond to this but, three years later, filed the UDRP complaint at much greater expense. The lesson here may be that sometimes it’s better to take a pragmatic approach by settling a case for a few hundred dollars rather than risk a few thousand dollars on a questionable UDRP complaint.
Abbreviation, “BT” is not Confusingly Similar to BODYTECH
Lucas Alvarez/Nutraline Ltda. v. JoJoJo Gravity, NAF Claim Number: FA2311002069264
<bt-phamaceutical .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant is a specialty retailer and direct marketer of nutritional products such as vitamins and minerals, nutritional supplements, herbs sports nutrition formulas with a head office located in Santiago, Chile. It claims to own the trademark registration number 1204725 for Bodytech with INAPI (Chile) since 2016. The disputed Domain Name was registered on 18 July 2023. The Complainant alleges that the Respondent offers a variety of pharmaceutical products for sale under the BODYTECH mark, most of which are illegal (not approved for human consumption), for example, a product called BODYTECH CLENBUTEROL.
The Complainant further alleges that the whois information is inaccurate due to the website’s nature of illegal activity and use of privacy protection and Cloudflare is employed to hide its real identity. Lastly, the current domain squatter of Bt-phamaceutical .com and the previous domain squatter of bt-phamaceutical .com which the decision was granted toward the Complainant’s side are the same group of person per the screenshot. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant claims that Nutraline Ltda. has rights in the BODYTECH trademark through registration No. 1204725 with INAPI (Chile) since 2016. In support of this, the Complainant annexes to the Complaint a copy of INAPI registration No. 1244325 for BODYTECH, registered on April 17, 2017, in the name of Vitamin Shoppe Industries Inc. There is no evidence of assignment or licence of that mark to Nutraline Ltda. However, the Panel has searched the INAPI database, which shows that Nutraline Ltda. is indeed the registrant of the BODYTECH mark, registration No. 1204725 with INAPI (Chile). Accordingly, the Panel finds that Nutraline Ltda. has rights in the BODYTECH mark. Besides, as to whether the domain name is confusingly similar to the mark, the standing (or threshold) test for confusing similarity involves a relatively straightforward side-by-side comparison between the mark and the domain name (WIPO Overview 3.0, section 1.7).
Neither of the two cases Lucas Alvarez v. Stefen Biahof, FA2047627 (Forum, July 9, 2023) <bodytechpharmalab.com> and Lucas Alvarez v. Lotto Samule, FA2062178 (Forum, October 13, 2023) <bodytech-lab.com> involved the <bt-phamaceutical.com> domain name nor a domain name substituting “bt” for “bodytech”.
In the absence of any evidence that BT is a well-known abbreviation of BODYTECH, the Panel is not satisfied that the <bt-phamaceutical .com> domain name is confusingly similar to the BODYTECH mark, despite the misspelt word “phamaceutical” evoking Complainant’s business. Accordingly, the Panel finds that the Complainant has not established this element.
Complaint Denied
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: No Response
Guest Case Comment by Panelist, Igor Motsyni:
Igor is an IP consultant and partner at Motsnyi Legal, <motsnyi .com>; (LinkedIN). His practice is focused on international trademark matters and domain names, including ccTLDs disputes and the UDRP. Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.BT is not confusingly similar to Bodytech and Complainant’s questionable TM rights
I would highlight two aspects of this decision:
1) Confusing similarity and
2) TM rights of UDRP complainants and potential abuse of the Policy1) While the first UDRP element is considered “a standing requirement”, the Policy was designed to deal only with cases when a domain name is confusingly similar to a trademark. WIPO Overview 3.0 (see section 1.7) states that “where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar”. This was not the case in <btpharmalab. com> where the Panel noted that “BT” is not a substitute for “BODYTECH” (the alleged mark of the Complainant) and there is no evidence that “BT is a well-known abbreviation of BODYTECH”. It is not uncommon for UDRP complainants to argue confusing similarity when there is either a rather low similarity insufficient to pass the test or there is none (see e.g. two recent decisions by the Forum in <nattyoutdoorstore.com> and, <discountknife.net>, both denied).
2) The Complainant in <bt-phamaceutical. com> identified as “Lucas Alvarez/Nutraline Ltda.”, relied on a Chilean trademark owned by a different entity – “Vitamin Shoppe Industries Inc.” and the Panel noted that “There is no evidence of assignment or licence of that mark to Nutraline Ltda.”.
What was the connection between the individual named “Lucas Alvarez”, “Nutraline Ltda” and “Vitamin Shoppe Industries Inc.”?
In a previous dispute involving the same Complainant identified only as “Lucas Alvarez” (without “Nutraline Ltda.”) over the domain name <btpharmalab. com> (see here) the Forum Panelist denied the complaint after the Complainant failed to respond to Panel’s procedural order and provide proof of his alleged trademark rights. The Complainant in <btpharmalab. com> apparently relied on two different Chilean “Bodytech” (“Body Tech”) trademarks owned by two different entities and failed to explain his relation to any of these entities.
The same Complainant, however, succeeded in the two earlier UDRP cases discussed in one of the previous ICA UDRP Digest editions where Steven Levy noted: “A brief online lookup of the submitted Chilean trademark registration numbers in those cases revealed that the business entities named as the owners seemed to bear no relation to the individual named as the Complainant… leaving the reader to wonder whether the named Complainant is legitimately related to the trademark owner or whether it’s someone gaming the UDRP system for nefarious purposes” (see here in ICA Newseltter vol. 3.42).
The UDRP is a simplified procedure that is less stringent than traditional court litigation when it comes to formalities.
However, such cases leave us to wonder whether there should be some additional formalities check, in particular alleged trademark rights of complainants, by both UDRP Providers and UDRP Panels?
I would welcome comments and thoughts of the Digest readers on this.
Does the WHOIS “Update Status”, Reflect the Change in Domain Ownership?
Patrick Schur v. Devin Day, WIPO Case No. D2023-4104
<ibubble .com>
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant owns a U.S. trademark for I-BUBBLE (figurative), registered on October 13, 2020 (first use: January 7, 2020). The disputed Domain Name was registered on May 20, 2001 and currently does not resolve to a website. The Complainant alleges that the mark has become famous and the public have come to recognise the Complainant’s mark as a distinctive identifier. The Complainant further points out that the disputed Domain Name has not been used since at least 2011 and that the “Updated On” status date of April 20, 2023, shown in the WhoIs data, is evidence of a third-party transfer of the disputed Domain Name to the Respondent that postdates the accrual of the Complainant’s trade mark rights. The Respondent did not reply to the Complaint.
Held: The disputed Domain Name was first registered on May 20, 2001, whereas the Complainant’s trade mark rights arose no earlier than March 27, 2019, the date of the registered trade mark application. The Complainant has supplied no evidence of actual use of the mark, whether before or after that date. The Complainant rather relies on the “Updated On” date of April 20, 2023, shown on the WhoIs database, as evidence that the Respondent acquired the disputed Domain Name after accrual of the Complainant’s trade mark rights. The Complainant maintains that it is reasonable to accept such an assertion in the absence of countervailing evidence, the majority of which would be in the hands of the Respondent. However, the Complainant bears the responsibility of establishing the three elements under the Policy.
In the Panel’s view, on its own, a change in the “Updated On” date on a WhoIs record is of little probative value. While in theory it might indicate a registrant transfer, it could also be triggered by other kinds of changes to the WhoIs data. The Complainant has failed to provide any registrant entries from historic WhoIs records for the disputed Domain Name that might have pointed to a registrant transfer.
The Panel notes that the Complainant also failed to provide any evidence that the Complainant actually traded under the mark I-BUBBLE, let alone that this mark had become “famous” or any evidence that the Respondent at any point targeted the Complainant. The composition of the disputed Domain Name is not inherently indicative of targeting in that it consists of the dictionary term “bubble” plus the prefix “i”, which has an obvious Internet connotation. Based on the available record, the Panel finds the third element of the Policy has not been established.
RDNH: The Complainant has made no real attempt to support its assertion of bad faith. As discussed above, the Complainant has not provided any convincing evidence to the effect that its trade mark rights predated the Respondent’s acquisition of the disputed Domain Name, let alone that the Respondent was likely to have been aware of the Complainant at any material time. Furthermore, the Panel notes that the facts here are similar to those of another decision where the Complainant, is represented by the same representative as here. See Patrick Schur v. Stephen Brewer, WIPO Case No. D2023-4098. In that case, amongst other things, the Complainant failed to provide any evidence of use of the relevant trade mark, and the Complainant again unsuccessfully relied on the “Updated On” status date in the WhoIs record as evidencing the respondent’s alleged acquisition of the domain name after accrual of his trademark rights. Accordingly, based on the available record, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Gearhart Law LLC, United States of America (“U.S.”)
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja: This Complainant filed two Complaints with WIPO simultaneously in October, 2023. The Panelist correctly notes that the facts argued in both cases are similar. The earlier matter of <demoji .com> reads: “The Complainant failed to provide any evidence of use of the relevant trade mark, and the Complainant again unsuccessfully relied on the ‘Updated On’ status date in the WhoIs record as evidencing the respondent’s alleged acquisition of the domain name after the accrual of his trademark rights”. The Panel also noted, “a change in the ‘Updated On’ date on a WhoIs record is of little probative value. While in theory it might indicate a registrant transfer, it could also be triggered by other kinds of changes to the WhoIs data.” Therefore, given the lack of proper and convincing evidence, the Panelist herein as well, upheld it as an attempt at reverse Domain Name Hijacking.
In order to establish bad faith registration of the previously registered Domain Name, the Complainant relied on the WHOIS update date and subsequent transfer of ownership, as outlined in WIPO Overview 3.0, section 3.9: “…the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. This holds true for single domain name acquisitions as well as for portfolio acquisitions.” The aforesaid stance has been upheld in numerous UDRP decisions, mainly, if in addition to the WHOIS Update date, the Complainant/Trademark holder could substantiate with more additional evidence in support of such an argument. See for example: Amit Kolambikar (Space Falcon LLC) v. John ladrok, CAC Case no. CAC-UDRP-105490, wherein the Respondent had acquired the 2011 registered Domain Name <spacefalcon .com> from HugeDomains in January 2022.
Respondent “Squalifies” to Keep Domain Name
<squalify .com>
Panelist: Mr. Sebastian M.W. Hughes
Brief Facts: The German Complainant, founded in 1880, provides cyber risk quantification services under the SQUALIFY trademark (August 25, 2023) via its website at <squalify .io>. The Complainant claims gross sales of EUR 67.1 billion euros and a consolidated profit of EUR 3.4 billion euros in the 2022 fiscal years; and asserts that it employs 41,389 people. The Chinese Respondent registered the disputed Domain Name on May 9, 2023 and currently redirects to his Chinese language video sharing account under the name of “Squalify” hosted by Douyin. It was previously offered for sale for EUR 99,999 via the website <bodis .com>. The Complainant relies upon this offer to sell in response to a third party enquiry made on his behalf prior to the filing of this Complaint. In response, the Respondent submits that the aforesaid third party did not disclose that he was the agent of, or had any connection with, the Complainant.
The Respondent contends that he registered the disputed Domain Name consisting of the dictionary word “qualify” prefaced by the letter “s” (which could stand for – for example – “super”, “service” or “sports”) without being aware of the Complainant and of its Trade Mark. The Respondent prays in aid of well-known brands in China such as Tmall, Vmall, Ename, and Ctrip; as well as global brands such as iPhone and iCloud – each of which consist of a combination of a single letter followed by a dictionary word. The Respondent also contends that he owns three other domain names, namely ohome .com, udaily .com, and fbill .com, registered in such manner, and that the Complainant filed the Complaint in an attempt at Reverse Domain Name Hijacking (RDNH).
Held: The Complainant mainly relies upon its Trademark SQUALIFY, Domain Name <squalify .io>, and the screenshots of its Website containing the three examples of use of its services under the trademark in support of its contentions. Further, the Panel has no reason to doubt the figures presented by the Complainant, but, notably, the Complainant has neither provided any revenue or profit figures related to its use of the Trade Mark nor any evidence of its use of the trademark in China where the Respondent is located. The Respondent, on the other hand, provides evidence showing that there are third parties unrelated to the Complainant who own trade mark registrations for SQUALIFY or domain names incorporating the term “Squalify”.
In all the circumstances, the Panel considers it is plausible that the Respondent did not know of the Complainant and of the Trade Mark at the time of registration of the disputed Domain Name. Accordingly, and in light also of the registration of the Trade Mark after the registration of the disputed Domain Name, the apparent de minimis use of the Trade Mark, the lack of any evidence of use by the Complainant of the Trade Mark in China, and the third parties’ use of the term “Squalify”, the Panel is unable to conclude, on the balance of probabilities, that there is sufficient evidence to show that the Respondent, in registering the disputed Domain Name, was targeting the Complainant and its Trade Mark.
RDNH: The Respondent seeks a finding of RDNH, primarily on the basis that the Complainant, being legally represented, should be held to a higher standard; and that this is a “Plan B” case initiated following an unsuccessful attempt to acquire the disputed Domain Name from the Respondent. It is puzzling that the Complainant did not submit more evidence of its use and reputation in the Trade Mark, particularly in China, prior to the registration of the disputed Domain Name. However, the manner of use of the disputed Domain Name, in particular the prior offer for sale via the <bodis .com> website, is not supportive of a finding of RDNH in this proceeding (see also Sage Global Services Limited v Narendra Ghimire, Deep Vision Architects).
Complaint Denied
Complainants’ Counsel: Lorenz Seidler Gossel, Germany.
Respondents’ Counsel: Self-represented
Reference: Commentary in the referred matter of Sage Global Services Limited v Narendra Ghimire, Deep Vision Architects <sage .ai> was covered in ICA Digest Vol. 3.37.
“Tpbfico” Fails Side-by-Side Comparison Test
Fair Isaac Corporation v. Doan Van Quang, NAF Claim Number: FA2310002068237
<tpbfico .com>
Panelist: Mr. Debrett G. Lyons
Brief Facts: The Complainant provides applied analytics services by reference to the trademark, FICO. The Complainant owns, inter alia, USPTO trademark registration dated August 31, 1999, for the mark, FICO. The disputed Domain Name was registered on March 23, 2020. The Complainant alleges that the Respondent is using the Domain Name for the sole purpose of driving Internet traffic to the Respondent’s website, trading on the goodwill associated with FICO and the FICO Marks, and offering confusingly similar and/or related goods and services in potential competition with FICO. The Respondent failed to submit a Response in this proceeding. The Complaint was submitted in English. Forum sent a formal Deficiency Notice to the Complainant pointing out that the Registration Agreement is in Vietnamese. The Complainant elected to provide a translation of the Complaint into Vietnamese and, absent a response (formal or otherwise), the Panel determines that the proceedings should continue in English.
Held: The Complainant has rights to the trademark since it provides proof of registration of the trademark with the USPTO. However, the terms are not identical and the critical issue in these proceedings is whether they are confusingly similar.
Here, the Complainant has offered no explanation as to how the added matter, namely the letters “tpb”, should be understood. The insinuation is that they are somehow “generic” and should be discounted, but it is not intuitive to the Panel how that may be so, and limited allowed research by the Panel did not show that they are a commonly understood abbreviation of some kind. The prior UDRP decisions cited in the Complaint therefore have little relevance. The Panel approaches the comparison from first principles, in terms of Para 1.7 of the WIPO Overview: “This test typically involves a side-by-side comparison of the domain name and… the relevant trademark”. Applying this test, comparison of FICO and tpbfico does not give rise to an immediate impression of confusing similarity.
Much of the information in the Complaint about the use and public recognition of the trademark may support a claim of common law trademark entitlement (were that necessary), or form the basis for inferential findings about a legitimate interest in the domain name or bad faith registration of the domain name, but it should not skew the assessment of whether, on a “side-by-side comparison”, the compared terms are confusingly similar. On balance, the Panel’s assessment is that the evidence points away from an inference of intentionally confusing similarity with the Complainant’s trademark. Indeed, instead the Panel found that “what emerges from the evidence and from the Panel’s limited enquiries is that, if bad faith exists, it is not vis-a-vis Complainant, but what seems to be a Vietnamese financial services provider, TPBank, not a party to these proceedings and not an entity on behalf of which the Panel would make findings under the Policy.”
As a result, the Panel finds tpbfico to be an element of no determinate meaning, which is also visually and otherwise quite different from the trademark. Accordingly, the Panel does not find the disputed Domain Name to be confusingly similar to the trademark.
Complaint Denied
Complainants’ Counsel: Ted Koshiol of Fair Isaac Corporation, Minnesota, USA
Respondents’ Counsel: No Response