Amazon recently won a UDRP for 42 domain names, and I think the list of domain names really helps to illustrate the trouble with domain name protection that brands face. The UDRP was filed at the National Arbitration Forum, and it is case #1701041. Amazon was represented by Fabricio Vayra of Perkins Coie LLP.
The domain names that were included in this UDRP are all very similar: amazonshippingcenter01.com, amazonshippingcenter02.com, amazonshippingcenter03.com…etc. through amazonshippingcenter42.com. As you can see, all of these domain names have the Amazon brand in them, and it seems to me that they could be potentially used in a manner that would appear to be associated with Amazon. In the single panelist ruling, the domain names have been ordered to be transferred to Amazon.
Although a UDRP win is probably satisfying for the complainant and its legal team, it seems like there could be an endless amount of domain names that could be created and used. Someone else could easily go out and register AmazonShippingCenter111.com, AmazonShippingCenter1.vip, or literally an infinite number of other domain names in a legacy or a new domain name extension. There is literally an endless number of domain names that could be created by registrants. Some could be used in a nefarious manner and I am sure others could be used in legitimate ways.
I don’t really know if anything can be done to prevent this type of thing from happening, especially when it relates to a brand like Amazon, which has a dual meaning. Obviously, Amazon.com is the massive company that sells just about everything you can imagine. However, the Amazon River and Amazon region are famous and have been around for much longer. Someone could legitimately own and operate AmazonTours.com or AmazonVideos.com without infringing on the brand’s marks.
Brands are in a constant battle to ensure domain names aren’t being used in a way that infringes on their trademarks. The fact that there is an infinite number of possible domain names that can be created makes the job of a brand protection firm and their legal team all the more difficult. As you can see with this particular UDRP, it’s not just an issue related to the new domain name extensions. These could just as easily be a .US, .CA, .XYZ, .Org, or almost any other extension.
This is a good case for brands to leverage their brand TLD, where they hold exclusive registration rights. It would not be foolproof but over time brands could communicate that if a domain does not end with their brand TLD ‘seal’ it is not an authentic property for their brand. Amazon is not the best example because their application for .AMAZON was contested by the Amazon rain forest region but it could be a good solution for Apple who own and operate .APPLE and .BEATS, or Citibank and Gucci who own .CITI. and .GUCCI respectively. I may be missing something but this use case for brand TLDs makes sense to me.
I believe you have mentioned that your brother was an attorney. UDRPs and everything related to trademarks and brand protection is only going to grow as a market. His skillset with your connections in the industry could really be a nice market for him to pursue. Just a thought because everyone is always looking to expand into something else as the new year approaches.