Seeking Advice on High-Profile Trademarked Domain (I own the TM)

[infinite]

Summary: I own the .com and other TLD's of the EXACT match for one of the world's most popular mobile banking services. This also means it is one of the top-ranked iphone apps and mobile banking apps. Seeking general advice and ideas.


Seeking advice on what I can or should do with these domains to see the most return on my extensive legal fees associated with defending and owning them. I currently have some basics sites on them related to my offline company and plans to grow it into a piece of a larger network of related services.

I have an existing computer business and domain/brand name (and Trademark) that is the SAME as one of the world's biggest bank's Mobile services.
It receives thousands of type-ins every month, and a strong base of active visitors looking for banking, financial, and technology related subjects. Admittedly, a large number of people are looking for information on the service of the same name, owned by one of the world's largest banks and financial entities. I have a clear disclaimer on the footer saying it is NOT the bank and we are not associated with them in any way.

I own the .com, .net, .org, .mobi, and most of the other extensions for this brand name. It is also my birth name and what all of my friends and family know me as. I also run a computer business under this brand and have plans to expand it into a larger online enterprise.

At my attorney's advice, I procured the Trademark for this term as quickly as I could after I began using it in commerce, and have granted use of the term in service-mark form to the bank as goodwill and in exchange for them not opposing my ownership of the trademark. I granted this use in the form of a co-existence agreement with stipulated terms of disclosure on my domain that it was not affiliated with their bank, and that they would not oppose my ownership of the trademark and/or domains.

What I'm wondering is... I've read about people domain leasing, trademark leasing, and other related topics, and wonder if any of you more experienced members have any advice for me based on the above. Don't want to put the actual name out in the public, but I would be open to discussing things via PM or under NDA.

Thanks!

 

[Biggie]

Hi

i'm no lawyer, though sometimes i do look like one

but i wouldn't lease out a tm name, that had potential conflict with well-known business, if that's what you're considering

 

[infinite]

Thanks for the response Biggie. Less interested in leasing it out due to the obvious liability, more just curious whatever people would do with it in my situation.

My plan is to actually grow the service/brand. Perhaps someday the bank itself will want to buy the domain/trademark from me at a mutually agreeable price, but until then continue forward using it as a real brand and company in a different sector.

 

[infinite]

Also, I guess I'm more asking about the various other extensions I have for this domain name. For example, I have the .net, .org, .biz, .mobi, etc.

I should probably keep these all in-house and branded the same as the .com would be my first thought. Just curious if there's any iron-clad ways to leverage these other domains.

Every time someone learns that I own this domain and trademark they ask, "OMG! how much does the bank pay you for them using that?!" It's a brand everyone knows, and I have legitimate prior use and trademark application for it. So I can't deny if I could continue owning this domain/trademark but somehow lease the other TLD's or use of the domain to the bank itself or something like that... that could be pretty cool.

 

[Theo]

Consider yourself lucky that you managed to utilize the brand in a different class. Others haven't been as lucky; in the famous case of Nissan.com (Nissan Computers) years of litigation by Nissan Motors have sucked the owner's finances dry.

So if you're asking what to do with it: use the domain per your tm class, because that's the only way you can enforce it.

On another note, since you already use an attorney (smart move) you should discuss these matters with them directly.

 

[katherine]

Sometimes being paranoid is just plain common sense: the bank might have been watching the domain and get ready to attack at the slightest mistake on your end.
If they are a large bank, they must be using monitoring services offered by companies like Markmonitor. Just because they have not approached you doesn't mean they are not aware you exist.

I echo the above: stick to your legitimate use for the domain.

 

[Biggie]

Also, I guess I'm more asking about the various other extensions I have for this domain name. For example, I have the .net, .org, .biz, .mobi, etc.

I should probably keep these all in-house and branded the same as the .com would be my first thought. Just curious if there's any iron-clad ways to leverage these other domains.

i agree that you should keep the other extensions in-house, just add 10 more yrs of reg on them.

as releasing them could/would be an opportunity for that "bank" to land grab, which could jeopardize your position in the future.


imo...

 

[infinite]

Sometimes being paranoid is just plain common sense: the bank might have been watching the domain and get ready to attack at the slightest mistake on your end.
If they are a large bank, they must be using monitoring services offered by companies like Markmonitor. Just because they have not approached you doesn't mean they are not aware you exist.

I echo the above: stick to your legitimate use for the domain.

My thoughts exactly. Based on my experiences and defense of this domain, they definitely know exactly who I am. I have signed paperwork with them.

Thanks everyone for weighing in! I'll be posting more on this site as time goes on, and I appreciate the advice on this topic.