EXHIBIT 10.05
TRADEMARK LICENSE
This Agreement, dated this 26th day of November, 1996, is made by and between
the NATIONAL ASSOCIATION OF REALTORS(R), an Illinois not for profit corporation
having offices as 000 X. Xxxxxxxx Xxx., Xxxxxxx Xxxxxxxx 00000-0000 (hereinafter
"NAR"), and RealSelect, Inc. a Delaware corporation having offices at 0000
Xxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxx Xxxxxxx, Xxxxxxxxxx 00000 (hereinafter
"RealSelect").
Whereas, NAR has established and desires to preserve, protect, enhance and
promote the national image and prestige of NAR as an association of real estate
professionals and RealSelect acknowledges and recognizes this image and
prestige; and
Whereas, NAR is the owner of all rights in and to various trademarks, trade
names, logos, initials and other symbols associated with NAR, including common
law rights; and
Whereas, NAR possesses valid Federal and/or State registrations for Trademarks
(as defined below); and
Whereas, RealSelect desires a license to use certain of NAR's Trademarks in
connection with the collection and distribution of information related to the
availability for sale of all types of real estate via Electronic Display, as
defined in the Operating Agreement dated as of November ___, 1996 between
REALTORS(R) Information Network, Inc. ("RIN") and RealSelect (the "Operating
Agreement"), (the "RealSelect Business");
Now, Therefore, for and in consideration of the mutual covenants and undertaking
hereinafter set forth and other good and valuable consideration hereby
acknowledged, it is agreed as follows:
ARTICLE I
DEFINITIONS
I.1 The term "Agreement" shall mean this License Agreement between NAR and
RealSelect.
I.2 The term "Block R Logo" shall mean that logo owned by NAR consisting of a
vertically oriented rectangular block, an "R" in a futura type face inside
the block and the term REALTOR(R) centered below the block, all as shown in
registration No. 1,137,081 of the Principal Register issued by the United
States Patent and Trademark Office on June 17, 1980.
I.3 The term "Licensed Xxxx" shall mean NAR's federally registered membership
xxxx, REALTOR(R) and the suffixes ".com" so as to appear as "XXXXXXX.xxx",
"@home" so as to appear as "REALTOR@home", and "@aol" so as to appear as
"REALTOR@aol" and shall include any other Trademarks, if any, which NAR
grants to RealSelect after (i) RealSelect has received the approval from
RIN, pursuant to the operating Agreement, for the Electronic Display of
Real Property Ads (each as defined in the Operating Agreement) on a new
electronic display vehicle or media and (ii) RealSelect has notified
NAR of this new electronic display vehicle or media and has requested
NAR's permission to use a specific Trademark in connection therewith and
(iii) NAR has granted its approval for such use, such approval not to be
unreasonably withheld or delayed. NAR is the owner of all rights in and to
the Licensed Xxxx.
I.4 The term "Parties" shall mean RealSelect and NAR.
I.5 The term "Trademarks" shall mean NAR's trademarks, service marks, marks,
logos, insignias, seals, designs or other symbols/devices used by NAR or
any of its members, affiliates or subsidiaries and associated with or
referring to NAR or any of its goods, services or membership. NAR is the
exclusive owner and licensor of these Trademarks.
ARTICLE II
GRANT OF LICENSE
II.1 Subject to the terms of this Agreement and to the extent permitted by law,
NAR hereby grants to RealSelect an exclusive worldwide license except for
use in Canada to use the Licensed Xxxx in connection with the RealSelect
Business pursuant to the Operating Agreement. The license is limited to
use of the Licensed Xxxx as it is defined herein, but shall include any
manner of display or communication of the Licensed Xxxx, and any variation
in its form provided such variation has been approved in advance by NAR.
The forms of display and communication of the Licensed Xxxx set forth in
Schedule A, attached hereto and made a part hereof and as may be amended,
shall be deemed approved by NAR for use by RealSelect.
II.2 NAR also hereby grants to RealSelect an exclusive license for the
RealSelect Business to use NAR's federally registered membership xxxx,
REALTOR(R) and the suffix "xxx.xxx", so as to appear as the domain site
"XXXXXXXxxx.xxx" (the "Location Xxxx"). However, the license is limited to
use of the Location Xxxx as a part of an Internet URL in connection with
the operation of the RealSelect Business. RealSelect shall not include or
use the Location Xxxx in the marketing or distribution of the RealSelect
Business or for any other purpose except with NAR's prior authorization.
II.3 Subject to the rights granted herein NAR expressly reserves for itself the
exclusive right to license its Trademarks, including the Licensed Xxxx,
and RealSelect may not assign its rights or sublicense the use of the
Licensed Xxxx to third parties. RealSelect may use a subcontractor to
manufacture, create or promote the services in connection with which the
Licensed Xxxx is used, but must require said third party to be bound to
the same terms and conditions as is RealSelect relating to this Agreement.
II.4 RealSelect shall at no time adopt or use, without NAR's prior written
consent, any variation of the Trademarks or any word or xxxx likely to be
similar to or confusingly similar to or with any of the Trademarks.
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II.5 It is understood and agreed that RealSelect shall not use the phrases
REALTOR(R) Property Ads and Voice for Real Estate in describing or
promoting the RealSelect Business.
II.6 It is understood and agreed that RealSelect may used the phrase "The
Official Internet Site of the NATIONAL ASSOCIATION OF REALTORS(R) in
connection with the RealSelect Business so long as all uses clearly
indicate that the business is operated by RealSelect, Inc; provided
further that RealSelect may use the Block "R" logo in conjunction with
such phrase provided such use is consistent with NAR's rules governing
usage of the Block "R" logo; provided further that RealSelect may replace
the word "Internet" with other approved forms of Electronic Display where
such phrase is to appear in the other form of Electronic Display.
II.7 It is understood and agreed that RealSelect may answer its business
phones with "XXXXXXX.XXX operations."
II.8 It is further understood and agreed that the approved domain name can
also be used on advertising, promotional materials, stationery, etc., all
in connection with the RealSelect Business.
ARTICLE III
QUALITY ASSURANCE
III.I RealSelect agrees to maintain a standard of quality for the service in
connection with which the Licensed Xxxx is used that will enhance and
contribute to the national image and prestige of NAR as an association of
real estate professionals and will at all times avoid impugning the
character and reputation of NAR and/or its members. If at any time
RealSelect is in breach of this requirement, NAR may terminate this
license as provided for hereinafter.
ARTICLE IV
TRADEMARK USE AND OWNERSHIP
IV.I NAR hereby represents and warrants to that to the best of NAR's knowledge
(i) the Licensed Xxxx and the Location Xxxx are valid and enforceable,
(ii) the Licensed Xxxx and the Location Xxxx do not infringe upon any
rights of any third parties, (iii) there is no claim, pending or
threatened, relating to the Licensed Xxxx or the Location Xxxx, (iv) NAR
has no commitment, whether express or implied, with any other person or
entity which is in conflict with the terms, conditions and understandings
contained in this Agreement and (v) NAR has all of the rights necessary
to enter into this Agreement and to make the grants herein contained.
IV.2 RealSelect agrees to use the Licensed Xxxx only in the form and manner
and with appropriate legends as prescribed in writing from time to time
by NAR, and not to use any other trademark, word, symbol or device in
combination with said Licensed Xxxx
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without the prior written approval of NAR. RealSelect agrees it will not
alter, modify, dilute or otherwise misuse any of NAR's Trademarks.
IV.3 RealSelect agrees that upon request it shall cause to appear on or in
connection with its services any reasonable trademark notices as NAR may
from time to time, upon reasonable notice, designate.
IV.4 RealSelect hereby acknowledges NAR's ownership of the Trademarks, the
Licensed Xxxx and the Location Xxxx and RealSelect agrees that it will do
nothing inconsistent with such ownership. Any and all use of the Licensed
Xxxx or any other Trademark by RealSelect shall inure solely and
exclusively to the benefit of NAR. RealSelect agrees that it shall not
apply for registration or seek to obtain ownership of any NAR Trademark,
including the Licensed Xxxx and, Location Xxxx, in any nation. Further,
RealSelect agrees that neither now, nor at any time in the future, will
RealSelect, its parent corporations, subsidiaries, or affiliates,
challenge or assist in any challenge to NAR's ownership rights in NAR's
Trademarks, including the Licensed Xxxx and Location Xxxx.
IV.5 RealSelect agrees it will use the Licensed Xxxx only in a fashion
authorized by this Agreement and will comply with all appropriate local
and national laws in the United States. RealSelect further agrees that
any use of the Trademarks by RealSelect will conform with the rules
governing the use of the Trademarks issued by NAR and its affiliates,
including specifically using the membership xxxx REALTOR(R) only where
the context of use will clearly express the meaning of the term
REALTOR4(R) as an indicator of membership in NAR.
IV.6 RealSelect recognizes goodwill associated with the Licensed Xxxx and
acknowledges that said goodwill belongs to NAR, and that any goodwill
associated with use of the Licensed Xxxx pursuant to this Agreement shall
inure to the benefit of NAR.
IV.7 NAR agrees that it shall be responsible for maintaining the validity of
the Licensed Xxxx and all registrations thereon in the United States. NAR
further agrees that upon RealSelect's request, and in consultation with
RealSelect, it will take reasonable steps to protect the Licensed Xxxx in
those foreign countries where RealSelect can demonstrate it needs such
protection in furtherance of its business operations, provided that any
and all expenses incurred by NAR in connection with such activities which
are undertaken at the request of RealSelect shall be paid equally by
RealSelect and NAR.
ARTICLE V
TERM
V. I This Agreement shall be in full force and effect from the Effective Date
as defined in Article XXIII and shall remain in effect as co-terminous
with the Operating Agreement unless terminated earlier in accordance with
the terms of this Agreement.
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ARTICLE VI
INFRINGEMEENT
VI.1 RealSelect agrees to notify NAR promptly of any known use of the
Trademarks or the Licensed Xxxx by others not duly authorized by NAR.
Notification of such unauthorized use shall include all details known by
RealSelect that would enable or aid NAR in investigating such use.
VI.2 Upon learning of any infringement, NAR shall, at its sole discretion,
take such action as NAR may deem to be appropriate to enforce its rights
or suppress or eliminate such infringement. RealSelect shall fully
cooperate with NAR in the prosecution of any action against an
infringer, but RealSelect shall not be liable for any legal fees or
other expenses unless agreed upon in advance.
ARTICLE VII
TERMINATION BY LICENSEE
VII.I RealSelect shall have the right to terminate this Agreement of
termination by RealSelect of the Operating Agreement, provided however,
that such termination shall not impair or affect any accrued rights of
NAR. A failure by NAR to comply with the obligations set forth in this
Agreement shall not constitute a breach of this Agreement by NAR unless
it continues for thirty (30) days after written notice has been given to
NAR by RealSelect.
ARTICLE VIII
TERMINATION BY LICENSOR
VIII.I NAR may terminate this Agreement by notice to RealSelect in the event
that RealSelect should fail to materially perform any act required by
this Agreement, or otherwise breach any covenant or agreement herein,
and such failure or breach shall continue for thirty days after written
notice thereof is given by NAR to RealSelect; provided that the prompt
cessation by RealSelect of any breach shall not give rise to a
termination right unless such breach was undertaken by RealSelect in bad
faith.
VIII.2 It is expressly agreed that the provisions of 7.2 of the Operating
Agreement shall be applicable also to this Trademark License Agreement.
It is expressly recognized that the termination of the Operating
Agreement can be the basis for termination of this Agreement.
VIII.3 RealSelect acknowledges that money damages alone are inadequate to
compensate NAR for any breach by RealSelect of any provision of this
Agreement concerning the protection of the Licensed Xxxx. Therefore, in
the event of a breach or threatened breach of any such provision of this
Agreement by RealSelect, NAR may, in addition to all other remedies,
immediately seek to obtain and enforce appropriate injunctive relief.
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ARTICLE IX
EFFECT OF TERMINATION
IX.I Upon termination of this Agreement, RealSelect agrees to immediately
discontinue the use of any of NAR's Trademarks, including the Licensed
Xxxx, all in accordance with 7.3 of the Operating Agreement.
IX.2 RealSelect agrees that all legal rights and goodwill associated with NAR
Trademarks, including the Licensed Xxxx, shall remain the property of
NAR and RealSelect shall make no claim to them.
ARTICLE X
INDEMNIFCATION
X.I Each party hereto (the "indemnifying party") shall defend, indemnify,
and hold harmless the other party (the "indemnified party"), its
officers, employees, and agents from and against any losses and expenses
(including attorneys' fees), claims, suits or other liability, arising
out of or in any way connected with the negligent or intentional acts of
the indemnifying party in connection with the exercise of the license
granted in this Agreement.
ARTICLE XI
SEVERABILITY
XI.1 Should any provision of this Agreement be held unenforceable or in
conflict with the law of any jurisdiction, then the validity of the
remaining provisions shall not be affected by such a holding.
ARTICLE XII
NEGATION OF AGENCY
XII.I RealSelect is an independent contractor. Nothing contained herein shall
be deemed to create an agency, joint venture, franchise, or partnership
relation between the Parties, and neither Party shall so hold itself
out. RealSelect shall have no right to obligate or bind NAR in any
manner whatsoever, and nothing contained in this Agreement shall give or
is intended to give any rights of any kind to third persons.
ARTICLE XIII
MODIFICATION AND WAIVER
XIII.1 This Agreement may not be amended except by a written instrument
executed by the Parties.
XIII.2 It is agreed that no waiver by either Party hereto of any breach or
default of any of the provisions herein set forth shall be deemed a
waiver as to any subsequent and/or similar breach or default.
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ARTICLE XIV
LICENSE RESTRICTIONS
XIV.1 It is agreed that the rights and privileges granted to RealSelect are
each and all expressly conditioned upon the faithful performance on the
part of RealSelect of every requirement herein contained, and that each
of such conditions and requirements are specific license restrictions.
ARTICLE XV
LIMITED WARRANTY
XV.1 NAR makes no representations or warranties with respect to the services
provided by RealSelect and disclaims any liability arising out of the
service rendered under the Licensed Xxxx. No use by RealSelect shall
create the implication of a warranty or guarantee by NAR or RealSelect's
activities.
ARTICLE XVI
ASSIGNABILITY
XVI.1 This Agreement shall inure to the benefit of NAR, its successors and
assigns, but will be personal to RealSelect and shall be assignable by
RealSelect only with the prior written consent of NAR.
ARTICLE XVII
GOVERNING LAW
XVII.1 This Agreement shall be construed in accordance with and all disputes
hereunder shall be governed by the laws of the State of Illinois. The
Parties hereto consent to the jurisdiction of the courts of the
competent jurisdiction, federal or state, situated in the State of
Illinois for the bringing of any and all actions hereunder.
ARTICLE XVIII
HEADINGS
XVIII.1 The headings herein are for reference purposes only and shall not
constitute a part hereof or be deemed to limit or expand the scope of
any provisions of this Agreement.
ARTICLE XIX
NOTICES AND PAYMENTS
XIX.1 Any notice required by this Agreement shall be deemed to have been
properly received when delivered in person or when mailed by registered
first class mail return receipt requested to the address as given
herein, or such address as may be designated from time to time during
the terms of this Agreement.
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To RealSelect:
RealSelect, Inc.
0000 Xxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxxx Xxxxxxx, XX 00000
Attn: Xxxxxxx Xxxxxxx
TO NAR:
NATIONAL ASSOCIATION OF REALTORS(R)
000 X. Xxxxxxxx Xxxxxx
Xxxxxxx, XX 00000-0000
Attn: Xxxxxxx X. Xxxxx, General Counsel
ARTICLE XX
COMPLETE AGREEMENT
XX.1 It is understood and agreed between the parties that this Agreement
constitutes the entire agreement between them and that all prior
agreements or representations respecting the licensing of NAR's
Trademarks, whether written or oral, expressed or implied, and whether
the NAR or ant party, shall be abrogated, canceled and are null and
void
ARTICLE XXI
ACCEPTANCE
XXI.1 This Agreement may be accepted and executed by the Parties hereto by
facsimile transmission of their respective signature.
ARTICLE XXII
SURVIVAL
XXII.1 The provisions of paragraphs II.3, II.4, IV.4, VIII.3, X.1, XV.1 and
XXII.1 will survive the expiration of termination of this Agreement.
ARTICLE XXIII
EFFECTIVE DATE
XXIII.1 Infotouch Corporation, a Delaware corporation ("Infotouch") and
NetSelect, Inc. a Delaware corporation ("NetSelect") have entered into
an Agreement and Plan of Merger, dated as of November __, 1996 (the
"Merger Agreement"), pursuant to which NetSelect will be merged with
and into Infotouch, with Infotouch being the surviving corporation (the
"Merger"). This Trademark License Agreement shall only be effective
(the "Effective Date") from and after the "Closing" of the Merger (as
that term is defined in the Merger Agreement).
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their duly authorized representatives and to become effective as of the date and
year first above written.
REALSELECT, Inc. NATIONAL ASSOCIATION OF REALTORS(R)
By: /s/ Xxxxxx Xxxxx By: /s/ Xxxx X. Xxxxx
--------------------------- --------------------------------
Its: Its: Executive Vice President
-------------------------- -------------------------------
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SCHEDULE A
1. XXXXXXX.XXX as an approved Internet Domain Site name.
2. REALTOR.XX as a Domain Site name where XX is used as an Internet designator
for country location, such as REALTOR.AU where "AU" stands for Australia, or
where XX is a recognized Internet suffix used by commercial enterprises now and
in the future provided the foregoing site names are only used to transfer users
to the XXXXXXX.xxx domain site.
3. XX.XXXXXXX where YY is a designator for a state or location such as "TN"
for Tennessee as a modification of an otherwise approved Domain Name provided
the foregoing site names are only to transfer users to the XXXXXXX.xxx domain
site.
4. Addition of other prefixes and suffixes reasonably necessary for the
effective use of any approved Domain Mane on the Internet where such suffixes
and prefixes are separated from REALTOR by punctuation (i.e. "`", "/", "\", ",",
"@" and other similar symbols). These would include the following:
i. "xxxxxxxxx@XXXXXXX.xxx" as an email address as long as the user of the
email address is a member of NAR, works for RealSelect, or works for an
Association of REALTORS that is a member or NAR.
ii. "XXXX://xxx.XXXXXXX.xxx".
iii. "xxxx://XXXXXXX.xxx/xxxxxxxxxxxxx/xxxxxxxxxxxxxxxx/" where the
xxxxxxxxxxxxx and subdirectoryname refer to directories and subdirectories on
the XXXXXXX.XXX Domain Site that allow for proper organization of the Domain
Site.
5. It is agreed that the above approved Domain Site name can use the Licensed
Xxxx in upper or lower case.
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