Summary In this episode of IP Talks, Jan Willem Prügel hosts one of Ukraine’s leading intellectual property experts, Ganna Prokhorova. The discussion unveils the intricacies of domain name disputes, touching on cybersquatting, typosquatting, and the UDRP process. Ganna shares her unique journey into IP law, the challenges within the Ukrainian market, and her influential role in the International Trademark Association. Listeners will gain insights into the legal and emotional aspects of IP disputes, illustrated by compelling real-world cases, including a domain name battle involving Dropbox. The conversation also delves into Ganna’s involvement in art law, highlighting its niche yet significant impact. Essential listening for anyone interested in intellectual property law and domain name resolution.Time Stamps00:00 Introduction and Disclaimer00:34 Guest Introduction: Ghana, Leading IP Expert02:26 Ghana’s Journey into Intellectual Property05:43 The IP Landscape in Ukraine10:36 Ghana’s Role in INTA15:56 Understanding Domain Name Disputes16:47 The UDRP Process and Cyber Squatting27:04 Domain Name Disputes in Ukraine38:11 Impact of COVID-19 on Domain Name Disputes38:41 Popular Domain Zones and Disputes40:20 Economics of Domain Name Registrations43:20 Challenges in Filing Domain Name Disputes45:25 Appeal Procedures and Legal Challenges46:17 Case Study: Michael Kors Domain Dispute51:51 The Dropbox Domain Name Saga01:03:09 Art Law: A Niche but Growing Field01:12:16 Advice for Young Lawyers01:13:00 Conclusion and Farewell Show notes More on domain name disputes: https://www.wipo.int/amc/en/domains/ Original Dropbox story told by the founder (starts at around 01:08:40): https://tim.blog/2018/08/29/the-tim-ferriss-show-transcripts-drew-houston/ One of Ganna’s favorite pieces of art: https://totallyhistory.com/composition-vii/ Ganna’s book recommendation: https://en.wikipedia.org/wiki/Lessons_in_Chemistry_(novel) 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
