Transcript
Disclaimer, the views, opinions, and statements expressed by the hosts and guests on this podcast are entirely their own and do not represent or reflect the views of their employers or any affiliated organizations. Additionally, the content shared on this podcast is for informational purposes only. and does not constitute legal advice.
For any legal matters, listeners should consult a qualified attorney or legal professional to receive advice tailored to their specific situation. IP Talks is a Jan Willem Prugel production, all rights reserved.
This episode’s guest is gonna put a holdover. Ghana is one of the leading IP experts in Ukraine. And partner of one of the leading IP boutique firms. She’s also a domain name, panelist for why post dispatch. Dispute resolution system. Kinda also works as an arbiter. Arbitrator at the court of arbitration for art Kapha. In the hake in the Netherlands. And if that wasn’t enough, she’s. Is also a chair of the copyright committee for the international trademark association. into. Her specialties are prosecution and litigation. Of trademarks and designs copyright. Border seizure. Proceedings. IP dispute resolution. IP litigation, domain name disputes, unfair competition. Assignments and licenses among others. In this episode, we primarily talk about domain name disputes that. If someone uses the names of a website in bad faith, for example, As a trademark infringement. It is a less known area of IP law. But one that is quite fascinating and we are lucky to have one of the greatest. IP experts. As a guest to introduce us into this fascinating. World. So without further ado, please enjoy this episode with.
Welcome to IP Talks, the world’s greatest private podcast on all things intellectual property, starring some of the world’s leading IP practitioners and your host, Jan Willem Prügel. You’re in for a treat. Enjoy.
Thank you so much for coming Ghana. I’m very happy that you could find the time and we have lots of things to cover. First, I would like to start by asking you to tell us a bit about your background and how you got into intellectual property law in general.
Oh, thank you so much for having me today. It was finally, we did it, because we were planning to have this interview for quite some time. Yeah. So I’m happy that we finally made it and I’m very happy proud and happy that you invited me to be the part of your podcast because I will tell you the truth.
This is actually my first podcast. I was many times in different interviews or speakers, but never in podcast. This is a great opportunity for me. And it is not a challenge, but it’s quite an interesting experience. So thank you so much for inviting me. In terms of getting into ip?
My career started like 19 years ago, so it’s quite long time ago. And at that time in Ukraine, IP was not that popular. I would tell. Like it was not popular at all. And I did a few trademark violence in 2004, and then since I, back in that time, I was the. I was working for one small law company, which was doing everything and nothing specific.
So I understood that I cannot do one day licensing issues. The next day, some criminal issues and the day of the family law practice, because I will never be very good into that. And therefore, since, again, it was 2004 and five. And internet was not that popular. We already had the internet, but it was really different.
So all the information about the practice, you could have. only from one of the best, one of the most famous magazines. We were buying magazines, actually. So that was legal practice magazine. And then every year they were publishing the best law firms in Ukraine. And of course, thinking of where I would like to be I was really searching and I, and in 2005, I sent my CV to one of the companies.
And that was one of the first AP boutiques in Ukraine. So when Ukraine became independent, almost a few years after that was the company who was doing an APN, that was a great experience because it was I was working in that company for 12 years. I, yeah, that was great experience because in the first interview, I met my manager partner was with me for the next 12 years and she told me a very interesting phrase, which I still remember this day, she told me like IP draws you in and once you are in, it’s for life.
So I feel it absolutely. I have even goosebumps saying that and I’m in IP for 19 years. I love it every single day. It’s always interesting. It’s always outside of the box. So yeah, I think could I briefly,
Ask you the IP space in Ukraine or the private IP space. Do you also have some large national law firms that also do IP or is the IP space mostly dominated by IP boutiques?
It is really mostly dominated by IP boutiques because first of all, IP, it’s not a niche in Ukraine, but it covers like five percent of the whole legal market. So still quite tiny market in Ukraine. Therefore, we have some companies, multi practice like Baker and McKinsey. They have IP department here in Ukraine.
But we also have those who are specifically in IP. And I guess for us, for those companies, because I’m also from IP boutique and I had the experience working in IP boutique and then in multi practice. But I personally believe, and I think that many colleagues will also relate to that, If you really want to develop your IP practice and you have really a tiny market, you need to be in IP boutique because you need to have balanced prosecution and enforcement.
Otherwise we know that normally those big companies, they are mostly focused on high margin cases. So like the companies with multi practice, they are not. Too much interested to have those like hundreds of filings and having, all those invoices for the filing. So it’s a lot of administrative work and it’s not possible to realize to if you are just in this multi practice term.
So I am super happy that I started with IP boutique 12 years. Then I was having my experience with multi practice and then in COVID times, which was super. Difficult decision, but we made it because we knew that we need to go further, we need to develop the practice, and we decided to establish our firm IP Boutique.
And I’m happy and I think that this is the way how it should be, at least in Ukrainian small market.
I you, you are now at a different firm than you originally started, or are you still with that firm? Yeah. O okay. No. So that was
12 years and then a few years in the malpractice and then already.
more than four years in this firm.
Can you explain to me what multi practice means? I had never heard that term.
So multi practice is like a Baker McKenzie again. I don’t know. Oh, like a full service, like a full service. A full service, yes, multi service, lots
of practices. Yeah.
Okay. Interesting.
And can, so what sort of IP work have you done personally and what would you say is your focus on, or did you pick any focus and if so, why?
I’m happy that we have, and I have personally dealt with all the objects, all the IP objects. So we deal with mainly trademarks. patterns, copyright design, but also GIs or even plant varieties, which is really just a few companies can do.
So I, because this is just the big experience. 19 years, it’s a big experience. So I dealt with any type of licensing or franchising agreements, any type of agreements or Also, anti counterfeiting and again, because of the tiny market in comparison to Germany, you normally have the lawyer who works only with patents or even with patent litigation.
Or those who are working only with copyright. In Ukraine, we are different. We try to work with all of the objects because, again, of the practice. We cannot do only patent enforcement because we don’t have so much, so many cases. So from one point, it’s good. From another point, of course, we see some, something weak points, but generally I’m happy to have this part.
And personally, I work mainly with trademark copyrighted in design. I
see. And are there any types of clients that you focus on mostly or that you ended up having a certain industry that you focus on? Or is it broad
across the board? Yeah the main industries, I would say that they are always pharma then agro because we are agricultural country.
It of course, Ukrainian Ukraine is very popular for it. And, and basically all the industry, but I would say that there are more. So FMCG also Sorry, no, I don’t, I was
thinking about if I knew it, but I don’t know what is FMCG?
FMCG, so it’s like all the household goods. Yeah, so also the producer of some household goods the companies like DM, for example, your famous is, they are also there.
I see. Okay. Wonderful. So that gives us a great overview. And I read that you’re also involved in INTA or INTA. Can you tell us a bit more about that and what you do there?
Yeah, sure. So this is one of the things that I’m really. Proud of because when I started in IEP Intel was something like, wow, Intel, this is the biggest achievement you can only have to be a member of that, to be a part of that.
And then I understood also that energy flows where attention goes. So if you want to be good in something, you really need to put lots of efforts. And when I started doing those regular. Annual meetings, then leadership meetings and being more active and active. And if four years ago, I was appointed to be the chair of the subcommittee at the copyright committee.
And now I’m chairing the copyright committee of NTA with 150 people. Congratulations. Yes. Thank you so much. And actually, I am the first ever Ukrainian who ever really shared the committee. Yeah. So for us, it was a big, a huge success. And even our, the head of our IP office, when I published this information in Facebook, she congratulated me because it’s really, it’s achievement.
It’s not only because of me personally, but it’s about the country because you became more heard, you have your own voice. And also, I feel personally, because also because of specific situation we are all now, I feel personally my responsibility before my country. I’m the ambassador of Ukraine.
I love my country a lot. And it gives me also some more possibility to be heard.
Could you explain to us for some of the listeners who may not be familiar what INT or Inter is?
So it’s the biggest association which unites organizations, private practitioners and different companies.
And the main idea is to promote. IP in the world to be also to influence on the lawmakings to also help to develop the laws in different countries. So for example, for Ukraine, it’s also very helpful because we can see the other practices in other more developed countries in terms of IP, because, Ukraine is still from the Soviet Union.
We have lots of things. We are dealing with them quite successful, I would say, but in terms of being present in other organizations and associations, being being able to speak and network with our colleagues from other countries. It’s always a plus because then we can influence, we can bring something new, something which is already working quite good in other countries.
We can change the law, we can, Make some proposals to the government and to our lawmakers So yeah, this is the way it normally goes
So it’s
basically this association united menu professionals and we have lots of Different committees, which are taking some specific topics and working and on that topics and developing lots of things.
And we can, for example, I just made some comments when the U. S. called for they were working on AI, and they were and NTA made some document proposing the view of the practitioners from the U. S., how they see some law clauses may be implemented.
That’s important stuff. That’s very important.
Exactly.
And if you want to be very active, you can definitely have this possibility. So I think it’s really helpful for all who are interested in that.
So how can they Register their interest. What would be the first step?
So the first step, you just need to be the member of INTA. You need to apply that.
So there is specific procedure for registration. You are applying to that. You pay your annual fees. You can then attend the annual meetings. But it’s not, because for example, They collect, so since there are annual meetings and they gather 10, 12, 14, 000 of people in one city. So it’s quite a huge amount.
So you can imagine. And also, so it’s a great networking field, but also if you want to be active and you can, if you want to be more into some topics, you need to apply to the committee. So there are lots of committees at the INTA website and you can choose what is better for you depending on your practice.
Every two years you can apply for that.
Very interesting and thank you so much for pointing that out. I think some people will be interested in that and may not have heard about it before. And this leads us to our main topic. topic that we have today, which is one of your specialties and which I must say I hadn’t really heard before, but I found super interesting the moment I read about it.
And so it’s domain name disputes. Also, I believe it’s called It’s connected to cybersquatting, although I’m not quite sure how they’re related. But could you tell us what domain name disputes entails and maybe what cybersquatting has to do with it?
Yes, it’s actually one of also the areas I’m specializing in.
And so basically, the domain name disputes is the part of the brand protection on the internet. The domain name disputes. Nowadays can be sold through the very great mechanism which was created back in 1999, which is called uniform domain name dispute resolution policy or procedure. It was developed to address the increasing issue of cyber squatting and cyber squatting is basically the registration of domain names.
Which are containing mainly trademark or brand name or even commercial designation that belongs to another person, but with the intent of reselling them or using them in bad faith. Since we all know that domain names are very easy to register and it goes really peanuts, and for that, since before creation UDRP, there was the only mechanism to solve this disputed and conflicted domain name, just to go through the court and You know how much time you need to solve this issue and how time consuming and cost consuming it can be.
Therefore, that was the great idea by ICON to develop this procedure. It helps the complainant to file the dispute within a approved dispute resolution providers. And nowadays there are six providers. One of the most famous is Viporg. Whatever we can call them, they help to solve the domain name dispute without the need to go through the traditional court procedure.
Okay. Before, sorry if I interrupt you before we continue, I have a few questions. So in remarks. So the first thing, so basically one of the cases of domain name squatting or cyber squatting would be for example, if Coca Cola. had been very successful for some reason wasn’t on the internet and I registered coca cola.
com and so they couldn’t have it. Because I know they are a big brand and they want to use it, but I took it away from them and then in hopes of capitalizing on their brand, that would be considered cybersquatting or domain name. Yeah,
yeah, absolutely. Absolutely. Or also similar to that is typosquatting.
For example, you decided to register at Abibas and you’re trying to, yeah, you’re trying to get all the fame of Adidas. Let me try if that is
still open.
Yeah, I assume that you can, since there are lots of new TLDs like top domain we now have dot club dot.
Area dot vine dot art. So you can have so many domain names and definitely be in the company. You cannot register the domain name everywhere in every TLD. Therefore it’s still possible, but what do you need to have to file the UDP? You need to prove only three elements. The first element is that the disputed domain name is identical or confusingly similar to the trademark that you have.
There’s some patent people among our listeners, or maybe non experts. When you’re using a domain name that is actually the name of a service.
Or of a product basically, or the trademark, then you’re using their trademark. And so thereby you are committing trademark infringement. Is that. The how it works.
Yeah. Yeah. In the domain name, it might be the either full trademark registered by you before the Registration of the domain name.
We are talking only about classical because there are lots of difficult domain name disputes, but Classically, it looks like you have a trademark registration meaning the sign You the word that belongs to you, to some kind of your business. And the cyber squatter registered either similar or identical domain name, which reminds or which is really similar to your trademark.
So then you have the standing requirement because you are the trademark you have a first your trademark registration, and then you have a standing requirement to file the complaint. The other two elements is that the registrant of your, of this disputed domain name doesn’t have rights or legitimate interest.
So there is also some procedure that how you need to describe and to prove that. The registrant of the disputed domain name didn’t have the authorization from you to use this trademark is not your distributor. So you didn’t have any agreements to that. And there is some other things that you need to prove.
So that was the second element, no rights and legitimate interest. And making,
sorry, wanted to make money. Pre presumably is not a legitimate interest because he doesn’t have the right,
and this is actually the third one. The was, so the third one is that the domain name was registered and used in bad faith.
So if you want to sell the domain name and there are actually lots of websites, that are selling the domain name and you can prove that that. Bad guy registered and want to make a profit from this domain name, then the registration is in bad faith. Three elements. If you see them, you can definitely file the UGRP complaint.
And within two months, in general, you will get your disputed domain name either transferred to you or canceled.
Wow. That’s quick. Again, two months.
Yes. That’s great. Yes. In comparison to court, it will take you a few years. I don’t know how much time you can have in Germany, but yes, it can in Ukraine, one, two years, sometimes more.
How are they able to do it so quickly and who’s deciding that , are those judges or who’s doing that? Yeah, so that’s,
actually those are judges within those providers that I just told you. So WIPO has, WIPO Arbitration and Mediation Center, and there are arbitrators or judges.
So I’m also the arbitrator at the, at VIPOR and also at Czech Arbitration Court. I do both actually. I represent clients when they file the complaint, but I’m also the panelist who issues the decision. And this is a great job because I’m, yeah, because you’re you’re the judge actually, because you see the papers of the complainant, you see the papers of the respondent and you are having specific rules according to which you need to do the domain name case.
And then you have your decision. So it’s super interesting. That’s,
that’s awesome. So asking the source, what’s your process? How do you render decisions so quickly? Is it always easy so you can do it quickly? Is it like a formalized process or are you just quicker than those state officials?
Yes, if it is clear cyber question, so of course it’s much more easier. And since I’m doing UGRP since 2019, I’m quite, fast nowadays to make the decision. Yes you have UGRP policy, UGRP rules, so everything is already prescribed. You have also overview of the main cases and since you have some experience, so it helps you also a lot.
So how do you become a judge or an arbitrator for the WIPO or some others?
I will tell you the truth. You just need to have a huge desire to be the panelist at any kind of centers because there is no specific procedure. How you can apply and you just need to feel it. If you want something, you need to, prove yourself that you can do that, that you have some experience working with domain name disputes. And honestly, I was trying to be the panelist of at the Vipor more than with one year, I tried to get in contact with them.
I really, but it was in 2019. I don’t know how it is now. So if someone wants to also take the chance I cannot make any. They cannot sue you. It was a big disclaimer. It was in 2019. It was my profile, my personal case. So it just worked out because I think that I prove that I can be, and I, and in that time, I already had quite a big experience in IP in general, and also the main name disputes, although not in UDP, but also in court.
So I knew that, and I was going to the workshop that FIPA had. And and I think that it was a really. Big step, I would say
Another office that you were granted. Congratulations as well.
Yes. Thank you. It’s a great thing. The one who is very interested into trademarks and the main, because the main names are more related to trademark, of course.
So it’s definitely a great thing to try.
Is that like an ex parte proceeding where you just deal with the complaint or do you hear the parties?
No. It’s you can do online, but I think that no one have it before. And mainly it’s documents. So it’s a change of documents. There are specific rules, how and when, so there is the timeline and then as the panelists, you have 14 days to make a decision.
14 days. Yeah. So
this is actually why it is so fast because also sometimes takes for the center to check all the things, check the payment, then also grant some time to the respondent to receive their response and then the procedure starts.
And you also mentioned earlier I can I looked that up so I vaguely know what it is, but could you briefly let us know more or less what we’re talking about?
ICON is responsible for coordinating all of the internet in general. They are responsible for technical maintenance of the DNS and internet addresses.
And ICANN was, the organization, which is actually, Produced this proceedings, UDLP proceedings. So they are one who are the main body that is responsible for the internet global domain name system.
I see. Okay. Very interesting.
Yes, I would like to go back to Ukraine because this dispute resolution procedure is quite new for Ukraine and it was adopted in 2019. So it’s just five years. Although it was quite successful. So during the year, for example, in 2021, we had 30 cases. So in two years, it’s quite a lot.
So you can really see the statistics and it was growing and growing until we had. 2022. And when the war started, of course, that was the big challenge for everyone. And VIPA decided that they will put it on hold. Therefore, within one year, this procedure was not available because they just could not guarantee that If the respondent is somewhere in the place where there is the battlefield and they cannot respond during this specific timeline, as I told you, just don’t have lots of time and they just wanted to make sure that all the parties have equal rights.
Therefore, for the whole year, this procedure was suspended and then resumed last year in July, it was in summer, and now it became more and more popular again. Last year it was eight cases, this year it’s already nine cases, and we are already representing of our clients, we are planning to file a few cases this and next week.
Therefore we’ll, we will somehow influence the statistics, but in terms of the interest so since Ukraine didn’t adopt the UDP in general, but the variation of this UDP we have a few differences. And I think that will be also interesting for your listeners. For example, if you want to register a domain name dot UA for example young William dot UA, you need to have trademark registered in Ukraine.
That’s absolutely obligatory, because in many other countries, if you want to register, I don’t know, de, I think you don’t need to be the holder of the trademark. So in Ukraine, if you want to have, I think that there is no mandatory application.
And so if you want to have to have the registration in the second level, domain name dot UA, you need to have a trademark registered, but if you want to have com UA or key of UA you don’t need it. So this is also interesting. As I told you before when you. file the complaint, you can ask either for transfer, so to be the domain name holder by yourself or to cancel that.
And we had a case, it was about OPPO, so OPPO UA, there was a conflict in domain name and the company who is the real holder of this trademark, they filed domain name and asked for the transfer. But in that time, so they had trademark registered somewhere in the world, but they didn’t have the trademark registered in Ukraine.
So the panelists made the decision, okay, we grant you that you can now be the holder of this oppo. ua domain name, but then they found out that. They just don’t have the trademark registration and they cannot enforce the decision. That was also a very funny thing. So if you want to have the domain name transferred in your favor, you need to be the trademark.
And this is the domain name dot UA. So you need to be the registered trademark or the licensee. Or, for example, we also have very interesting, and I think that some colleagues of mine told me that they have the same in China. That in Ukraine, although we have only one official language, Ukrainian, but since we were the part of Soviet Union, we have lots of people still speaking not now but before the war especially, we had lots of people speaking Russian.
And therefore, we have different transliterations, different pronunciations, and we have domain names. For example, the capital of Ukraine is Kyiv. In Ukrainian, it is spelled Kyiv. In Russian, Kyiv is Kiev. And spelling and writing is different. So therefore, Sorry,
I don’t think I heard the difference.
Can you say it again in both?
So Ukrainian is Kyiv. It’s K Y I V, Kyiv. And in Russian is Kiev. It’s K I E V. Okay.
The latter is a bit like we say it in German as well.
Yes. And those domain names are called mirror domain names.
So only one person can, yeah, because it’s layer, they’re mirroring each other and only one person, one registrant can have both domain names, but by itself. So Kiev and Kiev, only one registrar. And just recently I had as the panelists first ever case about this mural domain names or
anywhere
in Ukraine.
No, it was in Ukraine because not so many countries have this mural domain names. And when I was considering the case, I had the It was against Nespresso Kiev ua, so Nespresso, Kiev ua. And finally it was found out that the registrant of that domain name has another MI domain name, which was Nespresso, Kiev ua.
Since only one person can have both. Dan as the panelists, I issued the order that the complainant had the right to include the second domain name in the complaint, and only Dan, because otherwise I, you could not transfer. So only one person can be the registrant on both. And only after that there was a decision.
So both the, my names were transferred to the complainant. Sometimes what I like about AP or maybe even about life, sometimes you think that, everything on the subject, but it always, the life shows you that there are so many differences and that you always can find something where you would like to explain, explore, learn more.
And this is actually what makes our life even more interesting.
Absolutely. Said. I still have a lot of questions, follow up questions. First of all, When you say you register a domain, so for example, I have the domain IP talks that I use, but I know I didn’t buy it because I know that domain names can be really expensive.
So when you say register, is that the same as getting the ownership of the domain name?
Yeah, there is actually, you pointed out the question with that is always discussable. What is ownership? What is, so basically it is that. The registrar, the one who is allowed to give you domain, domain names, because those organizations that are having those.
They delegated in your favor some of the domain name and it is kind of ownership because I don’t know how exactly, what is the other word that we can use in this respect, but you Maybe rent? So I
think I’m renting my It’s
kind of renting, yes, because you’re paying once a year or once in a few years.
So yes. And this domain name is delegated in your favor and then you became the registrant too. I see. And so the,
The person, the registrar is that’s not a state actor. That’s someone from ICANN or WIPO.
Yeah. So for example, what I can say about Ukraine, we have the administrator of domain name zone.
It’s only one, which was authorized by ICANN. So the administrator of Ukrainian domain zone is hostmaster. ua. And this organization allows other players to register specific domain names and then they are delegating those to the final users like you.
Yeah, okay. I see. It’s like giving a license maybe, because it’s not quite ownership. It’s the permission to use it.
There is something different. I will be really quite, careful with saying those words because ownership is ownership as lawyers.
We both know what it doesn’t mean, but in terms of the domain names, we just tell those things that are Easy. Delegation, registration, and that’s it. We are not diving in because there are literally lots of articles saying domain name is also, someone even say that domain name is one of the IP objects.
So there are lots of books saying that This is the another not trademark, nothing else. But this is also the separate AP object. Someone is saying that this is the ownership and there is still lots of discussions and I don’t want to be responsible for something else. So I just want to. But it’s already, it’s
already helpful to know that it’s not quite clear cut.
Yeah, so another thing I’m wondering about is, how do you enforce a decision made by dispute body on the domain?
It’s very easy because when you register the domain name in specific zone, which where UDRP are applicable. it means that you already by buying or paying or renting this domain name, you already sign that if you infringe someone’s right, and there will be the center who decides not in your favor, then this domain will be taken from you.
Therefore, since Ukraine is the part of UDRP, like UA DRP procedure. And not all the domain names are subject to UGRP. UA, com. ua, kiv. ua, they are subject, but there are certain domain names. For example, one of the most famous cities is Lviv.
And there is also lots of domain names registered in this zone. Lviv. ua. But UDRP is not applicable, so you cannot go according to this procedure and if you want to go against the disputed domain name, you need to file the claim with the court. But If there is a procedure, this UJP procedure, so you can go with the center and it means that it’ll be automatically enforceable.
Ah,
okay. So after the, don’t even get involved.
No. After the decision is issued there are another 10 days, for example, respondent wanted somehow to. claim or go to the court, but normally it’s not possible. Then after 10 days, it’s automatically transferred or canceled.
I see
in general, it became more popular because of the COVID, because everything went digital. And there were Everything you could buy only online. Since online presence was really surged, then this remote work and e commerce growth it was also one of the reasons that domain name dispute became more popular it was expected, of course, but since 2020, it became more interesting. And now one of the most famous domain name zones which is very often where the many domain name cases are. Can you guess which one?
In the Ukraine you mean or in No, in
general.
In general. Worldwide.
You mean where most domain name disputes are?
Yeah, so the mo the most infringers, so of course it’s not applied to DE because you are not the part of UGRP, so unfortunately in Oh we
are not, oh
yeah, you are not .
So I would’ve thought that it’s maybe.com and then that’s the United States, but I seem to remember that they’re some nation states who have really convenient endings, like, for example, Tuvalu has like tv. I remember reading about that. Oh, really? Is that it?
Yeah. But it’s not, still com and also co, which stands for Columbia, but it’s when some, but also one of the most famous now is ai.
And it’s not related to artificial intelligence. It is related to one small country, which is Antigua. I’m not sure if I’m spelling that. Yeah. But all the businesses that are doing AI now, they want to register their domain name in this in this domain name zone.
So now I think that there are like 60 cases per year, although a few years ago, there was just one case in a year.
With the WIPO dispute resolution mechanism, or do they have their own?
No, they have WIPO and they fall under UDRP.
Do you know the economics behind domain? registrations because I seem to remember that some of them are really expensive and can cost hundreds of thousands or millions.
Who decides on the price? Is that the market? They put it on the market and the more people want it, the higher up it goes?
I think it depends registration of a domain name, if you want to record it’s really. Very low amount of money you can spend, but if there are some who are really working in this industry and who know that some of the company soon is coming with a new product and they already know the name of this product and therefore Those people are trying to register the domain name and then to sell it it is more brand related So technically it’s very easy and technically it doesn’t cost lots of money because it’s just a domain name.
It’s not the website. The website is a domain name then redirect you to the website, but the domain name is just this name, which you can type. But the economy really is related mainly to the brand itself. And the brand costs lots of money, then the domain name can also do that.
You probably are aware of NPEs of non practicing entities with patents. It’s companies that buy our patents and then hope people will use them and then charge fees or make them get a license.
Do you think those exist with domain names as well? Or you just register like a million names and then just hope somebody will need it? And then you can make a bank off of them?
Yes, that was the same actual situation with the trademarks. There was the good example that we had one bad actor.
When Ukraine became independent, that guy. He registered 400, 500 really famous trademarks because those companies just didn’t have the time to make those registration. And then he was selling those trademarks to the real players, to the real companies. In the domain name industry and in the trademark industry the rule is the same first come first serve.
I don’t want to name the client, but they’re actually also from Germany and they are very famous.
producers of sport products. And they told me we have those infringing domain names, like hundreds of them. But we want to deal only against those who are selling counterfeit because all our budget for from all of our department, we will just spend on the, fighting against the main names.
But if we see that this domain name is used in bad faith. So there are counterfeit products. Then we definitely go against that domain name because we know that this is infringing our rights.
Just a question that just arose and I think there’s hardly anyone better placed to answer this than you because you’re on both sides. Is it difficult to file those domain name disputes as a lawyer?
Because you can just say, Hey they’re a bad actor. And then the judge or the arbitrator has to gather the facts and they usually knowledgeable and they will be able to figure it out. Or is there a strong burden on the lawyer to figure out and prove the bad faith and all of that?
I saw a few complaints that was written by in house lawyers. And they were quite bad. In terms of the terminology, in terms of everything, in terms of elements, in terms of evidence
If you want to go I would definitely ask my colleagues, for example, to file the domain name in the U. S. Because there is quite some specific which I cannot be aware of. I had the case from very famous companies who filed the domain name complaint. It was absolutely clear that it is written by some junior associate because the company was as I told you, multi practice with many offices around the world, and it was very poorly drafted
and I was even about to refuse in the domain name because, for example, in the second element no right or legitimate interest, it was only one sentence. The respondent has no rights and legitimate interests, dot, without any evidence, without nothing, some major players, they are so confident about their name and about that they are right, that they don’t work properly on the document.
And that for me was really the sign that something really was bad, that day when the complaint was filed. So I would say you just need to be matured. In trademarks, mainly, if you have a domain name practice and experience, that’s great.
If not, you just need to read all the rules, all the policies, very careful. And then you can do that. But you really need to prepare at least if you try, if you file it for the first time in your life, you need to put some efforts.
Is there any appeal procedure or is it once you decide there’s no going back?
There is no appeal, but you are allowed then to go to your local court
So if the supposed owner goes to the WIPO, the disparity resolution system, they cannot challenge this by a court afterwards.
There is actually the possibility to challenge that, but. Okay. And I think that we will be discussing that in April next year when we will celebrate 25 years of UDRP in Geneva. Officially you can appeal it somehow, but there is no procedure how you can do that.
Ukrainian local court, if someone comes to you and say we have this procedure we, what you would like to appeal? Because they don’t have this, There is some decision of some arbitration center. There is no procedure how to challenge it. And and we actually had this case with Michael Kors.
I was the panelist who made the decision in favor of complainant Michael Kors in Ukraine. And that was obvious that there was something that there was a bad registration of a domain name. The respondent, tried to challenge the decision and she applied to the local court, but the court said formally we cannot do anything with this because this is just something we cannot deal with.
So nothing was decided. Therefore this type of thing normally doesn’t really work Again you can register other domain name Which will not be infringing the rights of other people you can still sell for example something I don’t know if there is if the country allows great import you can sell those great imported products But what’s great import?
Great import is when you are importing some products, but you are not the authorized importer. So you’re still allowed to import, let’s say some coffee, Lovatsa coffee, but Lovatsa has their own distribution channel and they cannot prohibit you to import this coffee to the country because there is no, for example, in Ukraine, there is no infringement of the trademark.
If you are just importing. If you are importing the product without using a trademark in other way, like in domain name. So you can still have like coffee shop dot UA,. Yeah. And you can sell that the products of Lovato you can be unauthorized distributor. You just need to be careful with our, with not infringing other rights.
How to advertise the, those products, but in terms of the domain name, it is very clear that you’re not allowed to use other parties registered trademark in this, in the domain name.
When you render a decision, do you guys discuss the case or do you have one person who’s in charge of an individual case and that person decides?
It can be only one panelist or three panelists. And I was the one, and there was also only one decision that I made. And there was, Okay.
Honestly, this is one of my favorite decisions because it was when the war started and I was issuing this decision in the shelter. And then my picture from this shelter was circulated in LinkedIn because it was she’s still working when the war is going on, but that was, the best distraction ever, because all the news were about the war, and the best distraction was to work, not to stop because, you need to be always still try to find some good things because otherwise you will be done. And this is something that our enemies want, so we will not make it happen.
You’re certainly a force for good and keeping up the process. So that’s a great share that you contribute to the country.
It’s awesome. Do you work from Kiev then?
Yeah, so now I’m living in two countries. I’m living actually in Germany in Potsdam.
And
yes, and in Kiev. So I’m there and there. The whole family is in Kiev and we are also there very often.
Now I’m in Germany because I’m going soon to New Orleans for the interleadership, so it’s better to go from Europe than from Kiev because it takes a lot of time to get from Ukraine because flights are not possible.
If you go to any, I don’t know how busy you will be, if you go to any bar, there’s a great.
There’s like a famous cocktail artist, like who, who revived the cheeky cocktail era and made many of the today’s cocktails like the real zombie and the Persian Polynesian pearl diver and lots of others. He’s in the French quarter. I think it’s latitude, I believe it’s called and Beach Bum Berry.
So if that’s one of the greatest bars in the world, if you do have some time, you should check it out. Maybe it’s a different number, but something like latitude, if you, but if you Google Beach Bum Berry. You’ll find it.
That’s interesting. That’s
interesting
information.
I studied a lot of tiki cocktail culture for some unnecessary reason, just because I thought it was, it sounded really interesting.
And because it’s complicated and I don’t know, it’s, it reminded me a bit of IP as well, because I always think about, can recipes be patented or trademarks. And I still don’t really know if it can be patented. I think it depends if you use something of
the substance.
Yeah.
If you, I think it’s not enough if you just put a few different alcohols together, but if you have a certain process or certainly like molecular gastronomy. Or mixology might do that he has a blog and he explains how he actually researched the ingredients.
Like a historian, he’s a tiki historian. It’s very interesting stories, but, don’t want to sidetrack us, but if you’re go into New York, new Orleans, that’s maybe something you could check out.
Thank you for the tip.
Oh yes. But
awesome. I’ve never
been there.
Yeah. Oh, cool. And I think they also have, civil law partially in Louisiana because it used to be French and the US bought it from them. It’s not quite like the rest of the country in terms of legal system. I think they might have some civil law down there.
Interesting.
All right. I was just going to Relay one story because when you told me that you wanted to do domain name disputes I didn’t know anything about it. There was only one instance that immediately came to mind. About five years ago, I listened to a podcast episode from a show that I sometimes listen to called the Tim Ferriss Show.
And they had the founder of Dropbox on as a guest. And the guy’s called Drew Houston. And he actually spoke of a domain name dispute that I found so awesome that I actually went back yesterday and tried to find it and listen to it. To remind myself of the story because it’s such a crazy story that also illustrates how important these conflicts are.
Dropbox. is probably pretty well known now. It’s a multi billion dollar company from the U S and you can store your files online. It’s a bit like G drive, like Google drive, but it works really well. And it’s integrated in lots of services and it used to be called get dropbox.
com. Because they couldn’t get the Dropbox domain name. How Drew came up with the idea was that they used to go and make a LAN party. So local area network parties where they go to someone’s house and they bring their computer and then they set up a local area network and then they game together.
And sometimes people were missing certain patches or certain data in order to play correctly. And so they would put, they make one folder that they call Dropbox, where you could put all the patches and all the files in order for people to play the game. And so he initially wanted to call it, I believe, folder anywhere com.
com. com. There was a site,
but
it was a bit, not that genius. And there was also a company called Files Anywhere, no, Files Anywhere. com. And so he thought that might not be a good idea. And so he was chatting with a friend and he said, ah, I think I’m going to call it Dropbox. And the friend was like, yeah, whatever.
And
and then, so
he, and then he was gonna get, go get Dropbox. com. It was already taken. And so apparently you can sometimes look up who owns. The domain names. And he then called the guy and it was like some dude. And he said, yeah, he asked me are you using that domain name?
And he said, yeah, I’m actually using it for a project. Do you want to get, do you want to sell it or do you want to get to some kind of arrangement? And the guy was like, no. And said, all right, whatever. And so then they forgot about it. And then he had developed the company. Yeah.
He went to Y Combinator, which is a startup incubator that helps startups scale. They have, for example, Airbnb, Stripe, Coinbase, and DoorDash. They’ve all been funded by them. So they, have a huge track record. And Drew didn’t want to change the name. And so they forgot about it and just started building their company.
And at some point they were like, Hey, We should really get that domain name. And so they had a co founder by now. And that was in 2007. And he was calling the guy again. Hey, how’s that project going? You’re doing yeah. Hey, you want to sell your domain name?
Nah. And then those guys got really nervous and they moved to. San Francisco. And so they had VC funding by this point. From Sequoia capital, which is one of the largest VC funds in the world. They were putting in, tons of money, millions, but they didn’t have the domain name and the founders were like, yeah, whatever, we get it.
So we just get drop, get Dropbox for now. The VCs really put pressure on Drew and his co founder. And yeah, dude, we got to do something. And then they actually took a cab and went to his house, to the guy’s house.
And I thought,
What was the worst that could happen?
So they thought, Hey, maybe we should, Not just barge in and just get some champagne. So they went to a corner store and bought a bottle of cheap champagne. And they knocked on his door and it was like 9 p. m. The guy opens up, he’s a bit shocked but drinks the champagne.
And so they’re like, so how’s your project going? And he’s yeah, it’s all right. So yeah, we got funding from Sequoia Capital. So we want to get this over with. And so I really need that domain, and he’s I can talk to a friend and I’ll be in touch next week.
All right. And they were like super ecstatic. And it’s awesome. Then on Monday he called them, yeah, I thought about it. No, thanks. And hung up.
Dude. Okay. Then they still forgot about it and they just use get Dropbox. Then the problem was, and this is where something of this comes in, what you were talking about. Then he didn’t just not use it, but then he put on that, all the people who were using Dropbox beta, the test version.
They all, of course, went to Dropbox. com first, and he put up a landing page with Google AdWords and was actually cashing in on the brand name. And not only that, but he put on. AdWords, for their competitors. So it was actively hurting their business. And then the funny thing is, Drew explained and so the way how we’ve fixed it was actually the federal copyright and free mark code, and I looked that up. So the Fremark code doesn’t exist so what he would have looked up, in 2007 or 8, at that point, was the Any Cybersquatting Consumer Protection Act, ACPA.
Which apparently is an amendment to the U. S. Trademarks Act, and it has nothing to do with copyright law.
But the funny thing is, he said Fremark, and I know they have service marks in the U. S., which is like a trademark. Yeah. And I thought Fremark is maybe something else and it doesn’t exist. Because he’s a computer programmer. It’s a coding tool, like an engine for Java, but it’s funny that he said Oh yeah, I found it on the copyright and Fremark code and that’s the solution, but it goes right around what you said so they would have used the ACPA and the uniform domain name dispute resolution policy, the UDRP, either one.
He doesn’t go into detail. But he did say it’s illegal to intentionally confuse customers. And they also didn’t drew, didn’t register the Dropbox trademark, which didn’t help. But eventually they were so angry that they threatened to sue. That guy, and then that got his attention finally.
And he said, yeah, all right, let’s settle. And they say, okay and they finally, they settled and said, okay, we’ll pay you 300, 000 or stock. And the guy said, I’m going to take money. And so he took 300, 000 and for nothing, just for being a difficult person. No, he was
first. He was first.
His first come first serve. So he was more, into that. So he was, but
He, I think what would have broken his neck is that he was trying to then use their brand. The funny thing is, if he would’ve taken that stock, that was in the seed stage, that would’ve been worth several hundred million dollars if he would’ve taken that.
That’s how powerful domain names are, and that is crazy. So that’s just a story. I’ll, yes it’s, and I remember that from five years ago. I will put in the show notes. By the way, anything you would like people to listen to or to watch or read. Just send it to me and I will put it in the show notes.
I’ll also put in the original lip of that story because he tells it really nicely. But yes, so that’s just one thing to illustrate how important that is. I thought,
yeah, great story. Really. Thanks for sharing. It’s a fun, it’s a lot. Everything comes from those. Kind of stories where you can finally get your lessons.
So if you would have the trademark registration that guy who registered first with my name. He would even had more and at the same time with the company with the Dropbox itself. So if they had the domain name registered or if they even took it when they started to be interested in that domain name, it will also not be that difficult it happened in the in the forthcoming years.
So yes, you need to be prepared.
Yes, that’s very true. are there any other cases that you’ve done, because you’ve obviously done much more than domain name stuff, that you would like to talk about that were formative or that you really enjoyed doing?
Oh It’s difficult to to take one of the cases from the whole experience, but the first thing that comes to my mind is the case that we are handling for the third year. And this case, it actually involves a few different infringements. So we were dealing about one of the guys who was a very famous counterfeiter of coffee.
One of our clients who is the famous German producer of coffee. The company found out that there is the coffee, which is sold on the local market, but this is not the original one. And there is not only. that coffee, but also some other packages of coffee, which looks similar. When we took this case, we found out that this bad actor, registered the design infringing the rights of the clients.
He registered two copyrights because in Ukraine, it is possible to register a copyright. And he also registered the trademark. Which had the famous facade of the building of our client, because the client is very a long time on the market. From one case, we came to a few cases, because we had to challenge two copyright certificates, one design.
patent because at that time we still had the patents for the design now we have design certificate and the trademark kit which is still going on but we already won three cases now we’re still in the court and next week on thursday we will have one of them i hope that it will be final court session.
Again, that guy in terms of the trademark cancellation, because it’s already the appeal court. I hope that we will finally come to the end, but this is really an interest in how the infringer was prepared. And when we had declined in Ukraine, it was, it started before the war. And he saw two packages.
One of them was not real, was counterfeit. And he was like, Looking at those two packages of coffee and he was like I don’t know what is real and what is not and At the end because both of them has really good quality the paper is also good and even it comes out it came out that The package of the counterfeit product, the fake product was even better in terms of the quality than the real one because it was a lot of gold, but the thing was that on that package.
There was information written in German and there was one letter missed in one of the words. So in, in Deutsch. So and that was the only possibility to see what is fake and what is the real product. But so this is one of those, so in
that case, it wouldn’t be the same cases, they would be split, even though it’s
split, yes, because there was a separate subject.
So if you want to challenge yet, so if you want to cancel one of the object it’s it’s a little different.
Interesting. And I read on your page that you also are involved in art law. Is that still correct? What exactly is that?
My love into art law came from my passion, because I’m also painting.
I did art law course at Sotheby’s Academy in London. Art law is super small niche right now I was speaking to one of the famous Ukrainian art dealers and we tried to evaluate the market we had lots of figures and we came to the conclusion that Ukrainian art law market is 0.
- So it’s, super, super small in terms of the art law. Art law deals with everything around artistic work. So it’s creation, protection, and sale. The issues include copyright, which protects artists rights to their creation, all regulations that protect cultural heritage, restitution of stolen and looted art, import and export rules for artworks, all of that, all related.
And since normally there are not so many cases about art law mainly the one whose rights are infringed are artists. And normally artists don’t have lots of money, even if their works are used somewhere in advertisement or in clothes, they not often enforce their rights.
When we do this work, we often try to help them and we do some work pro bono. For example, we helped to register one of the famous artists of his mural I’m into art law, since 2018 when I had those art law study in London.
After that I develop this practice in Ukraine. Now I work with the main art dealers and very famous sculpturists and painters. Also, I’m one of the authors of the Art Law Guide. We are the only one company from Ukraine that delivered the material about art law.
It’s interesting field, but also not really developed because again Art law is very popular in New York. I mean in the US. So because there are three big markets uk us and asia and therefore in those regions.
They are more or less. Better in art law or for example in europe also italy They have lots of rules germany sometimes Even I saw my colleagues from hungary You But we are still, this is still not very developed, although lots of fun, lots of impressions, lots of something that really helps you to deal with difficulties of this world.
You have the chance to influence how art law is practiced as well, because if you are one of the main people who educate on art law, then you can shape it as well. So it’s not like it’s a huge market that has been there for many years, but you’re still in the process of designing it a bit as it were.
So that’s also very
exciting. Yes. And I was the lecturer of art business schools for a few years, when the COVID started. So everything went digitally and there was a big demand for art law. Since there were many courses, how to deal with art, how to be the art manager, and of course those people just knew how to paint or how to make exhibitions, but they didn’t have a clue how to protect their rights.
And how to make necessary contracts with art people and so making the exhibition is good, but also you need to have the legal background for that. You need to have a certain agreement because there might be someone who is responsible for the works that are sold or that are showed to the public.
That was also very interesting experience. But nowadays I would say that art law, at least in Ukraine, is not that much developed right now because we are focused on other issues.
Sure. But it’s nice to have things, as you said, that to focus on that make life a bit more pleasurable.
Exactly.
Exactly. Wonderful.
Oh yeah. So maybe then just a few quick fire questions. What would you say is your favorite painting? If you’re an art lawyer, do you, you must have favorite painting Yeah. Or favorite work of art?
I like Kandinsky and I also have the poster. I am not able to buy a real Kandinsky, but I have a poster here on my wall because he is the artist who really knows.
what the shape is and what the color is and how to combine them. When I started to be into art and before even I thought it how to paint, I was mainly focused on the, masters from Like Rembrandt.
All those school, then I switched to impressionist. Then it was post impressionist. But when you are for a long time into some subject and you try to understand what is art about, how, what is the difference between art and decoration, how to understand, And I started to understand that when you look at art, it’s not just, I would like to have this painting on my wall.
It’s not about that. It is about the author itself. It is about at what circumstances he was growing, how he came to that, what was the historical period and why did that painting is that much important? Why the Picasso paintings are so much interesting right now?
And what was before Picasso? So why Kandinsky painted the way he was? So it’s more than just look at the picture and say, I like it. Nowadays. I don’t perceive the art from the point. I like it or not, because even in the painting or in this culture, there is something which when you look at it, you feel some disgust, because modern art is also often about some disgust because they want to challenge your emotions.
Yeah, they want to challenge you. So then you become more interested. So this is about art is because decoration, you have many things for decoration, but normally you don’t have those feelings. When my boyfriend recently showed to me some painting he would like to buy, I told him I don’t feel anything.
It’s really painted okay, but I don’t feel anything. And I, so this is just the decor and this is not the way I look into art. Art is much more and yeah
yeah if you can then maybe later send me the name of the work and then I can also put it in the show notes so people can understand what maybe, or maybe feel their, have their own emotional response.
Great. I will do that.
All right. And best book you’ve read recently.
Oh, I recently read a really fantastic book, which I which I liked, Lessons of Chemistry. That was that was really great to read because it was, first of all, it was in English finally because I often read in Ukrainian and I often read professional books, all, I think that all lawyers do there’s some commentaries to the codes or whatever, but that was.
Lessons of chemistry and there is also a series, a movie about that. But that was about the woman who loved chemistry so much and she found a way how to involve other people to be interested in chemistry because she started to have her show, her cooking show. And then he showed how to make how to cook with the background of what chemistry is about, how you can mix the things and why it is necessary to do that.
So there are really there are lots of good things about this book and what it can show and what other feelings they can produce. It’s also about the woman in 1670s years of the last century when women were not that free in terms of where to work. And so this is also about the freedom of speech of women.
So lots of Great thoughts you can have from that book. So I would definitely recommend it. And I think that everyone will enjoy it. All right. And
finally your advice to young lawyers, what would you recommend a lawyer that’s just starting out? What’s important? What maybe is overlooked too often?
Oh,
interesting question, I think. Let’s put it very simple. Okay. If you want to be good into what you do your work good or don’t do it at all, because you will achieve some great results only if you put effort. Otherwise, just be lazy. Don’t waste your time. Maybe it’s just not yours.
Wonderful.
Those are great parting words. That is super helpful. Thank you so much for this wonderful conversation, Ganna.
Thank you
so much. That was very interesting. Also for me.
For me as well. And I think people will have learned a lot.
Hope hopefully it will be interesting for not only for us. I
think people will really enjoy it. Yeah, definitely.
Okay. So have a nice night. You
too. Yeah. You as well. All right. Take care. Bye bye.
Yes. Bye bye.
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