Exhibit 10.37
SERVICEMARK, TRADEMARK AND DOMAIN NAME ASSIGNMENT AGREEMENT
between
VORTEXX 2000 LLC
and
HEYAMI LIMITED
December 7, 1999
SERVICEMARK, TRADEMARK AND DOMAIN NAME ASSIGNMENT AGREEMENT
This SERVICEMARK, TRADEMARK AND DOMAIN NAME ASSIGNMENT AGREEMENT (this
"Agreement") is made this 7 day of December, 1999 by and between:
Vortexx 2000 LLC dba Xxx Dot Com, dba Tontological Media, a limited
liability company organized and existing under the laws of the State of Nevada,
with its offices at 000 X. Xxxxxx Xxxxxx Xxxx. 0/xx/ Xxxxx, Xxx Xxxxx, Xxxxxx
00000-0000 ("Xxx.xxx"); and
Heyami Limited, an international business company organized and
existing under the laws of the British Virgin Islands, with its correspondence
address at 00/xx/ Xxxxx, Xxxxxxxxx Xxxxx, 00 Xxxxxxxx Xxxx, Xxxxxxx, Xxxx Xxxx
("Heyami").
PREAMBLE
WHEREAS, Xxx.xxx is the registered owner of, and has set forth as
Schedule I the domain name "xxx.xxx" and all other domain names consisting of
the letter combination "xxx" owned by it (other than xxx.xx) (the "Domain
Name");
WHEREAS, Xxx.xxx is the common law proprietor and beneficial owner of
a certain service xxxx/trademark throughout the world, details of which are set
out in Schedule II hereto (hereinafter referred to as the "Trademark"), and has
made applications in the United States and in the European Union for
registration of such trademark, details of which are set forth in Schedule II
hereto (hereinafter referred to as the "Trademark Applications"); and
WHEREAS, Xxx.xxx has agreed with Heyami that, for the consideration
hereinafter appearing, and subject always to the terms and conditions hereof,
Xxx.xxx shall transfer to Heyami all rights in and relating to the Domain Name,
and, as beneficial owner, shall assign to Heyami all rights in and relating to
the Trademark and the Trademark Applications throughout the world.
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants and agreements described herein, the Parties agree as follows:
Chapter 1
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Assignment of Servicemark, Trademark and Transfer of Domain Name
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Article 1. Based on and subject to the terms and conditions set forth
in this Agreement and for the consideration set forth in Articles 3 and 4 below,
Xxx.xxx hereby sells,
assigns and transfers to Heyami, and Heyami hereby agrees to purchase from
Xxx.xxx, all Xxx.xxx's right, title and interest in and to the Domain Name.
Article 2. Based on and subject to the terms and conditions set forth
in this Agreement and for the consideration set forth in Articles 3 and 4 below,
Xxx.xxx hereby sells, assigns and transfers to Heyami and Heyami hereby agrees
to purchase from Xxx.xxx:
2.1 all the property, right, title and interest in and to the
Trademark including all common law rights connected therein together with the
goodwill of the business relating to the goods and services in respect of which
the Trademark is used and all rights therein at common law;
2.2 all the full benefit of the Trademark and the Trademark
Applications including all of the rights Xxx.xxx may have at common law to the
intent that upon such Trademark Applications being in order for registration,
this Agreement shall operate to vest the same in Heyami as registered proprietor
absolutely together with the benefit of any use of the Trademark and the
Trademark Application prior to registration; provided, however, that it is
distinctly to be understood that Xxx.xxx neither warrants nor guarantees that
such registrations will be granted by the respective governmental authorities
involved, and
2.3 all rights, both at law and in equity, to maintain and enforce
any rights subsisting in the Trademark and Trademark Applications, including but
not being limited to commencing and maintaining legal proceedings for passing
off or infringement of Trademark or any such similar proceedings in respect of
the Trademark and the Trademark Application.
Chapter 2
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Consideration; Option; Payment; Recordation of Transfer
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Article 3.
3.1 The consideration (the "Consideration") to be paid by Heyami for
the transfer of the Domain Name and the assignment of the Trademark shall be
US$2.5 million. The Consideration shall be paid to the Escrow Agent (as defined
in Article 7), who shall release the Consideration pursuant to the terms of the
Escrow Agreement (as defined in Article 7) in three installments as follows:
(i) Upon the satisfaction of the conditions set forth in
Article 6, $1.5 million;
(ii) Upon the receipt by Heyami of evidence satisfactory to
Heyami that Network Solutions, Inc. has completed the transfer of the Domain
Name to Heyami, $500,000 (the "Transfer Date");
(iii) On the date that is ninety (90) days after the Transfer
Date, $500,000; provided, however, that if within such 90-day period Heyami has
received written
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notice from any third party challenging the transfer of the Domain Name or
Heyami's registration or use of the Domain Name (a "Claim"), the provision of
Article 3.2 shall apply.
3.2 If, within the 90-day period referred to in Article 3.1, Heyami
receives a Claim, Heyami shall have the right to defend or settle such claim
with counsel of its own choosing; provided that any settlement must be approved
by Xxx.xxx, which approval shall not be unreasonably withheld or delayed. Heyami
shall be entitled to apply all or a portion of the $500,000 remaining with the
Escrow Agent (representing the third installment of Consideration) to cover
Heyami's costs and expenses, including reasonable legal fees, incurred in
defending or settling such claim. Immediately after resolution of the Claim,
Heyami shall instruct the Escrow Agent to pay the balance of the escrowed funds,
if any, to Xxx.xxx, together with accrued interest thereon from the Closing
Date.
3.3 Nothing in this Article 3 shall be deemed to modify or diminish
Xxx.xxx's indemnification obligations pursuant to Article 18 of this Agreement.
Article 4. In addition, provided Xxx.xxx is not in breach of its
representations, warranties or obligations hereunder, Xxx.xxx shall have the
option (the "Option") to purchase at the initial public offering price up to a
total of US$2.5 million worth of shares in any of the Heyami Group Companies (as
defined below) that is publicly listed on a stock exchange or board. The
exercise of the Option shall be subject to receipt of the preliminary prospectus
by Xxx.xxx and subject to all securities laws and other relevant regulations
applicable to Xxx.xxx and the relevant Heyami Group Company. The period in which
the Option may be exercised and the other procedures with respect to the
exercise of the Option shall be determined by Heyami in consultation with the
relevant Heyami Group Company and its underwriters. Xxx.xxx shall be notified of
such procedures at the same time as the preliminary prospectus for the relevant
offering is delivered to it. A Heyami Group Company shall mean Heyami and any
company in which Heyami holds at least 51 percent of the issued and paid-up
shares of such company, and/or by any company that uses the Domain Name and/or
Trademark under authorization of Heyami or its designee.
Article 5. To effect the assignment of the Trademark and the
Trademark Application, the Parties shall execute and have notarized the
Trademark Assignment (the "Assignment"), substantially in the form attached
hereto as Appendix A. To effect the transfer of the Domain Name, the Parties
shall complete, execute and have notarized the Registrant Name Change Agreement
- Transfer (the "Transfer Form"), substantially in the form attached hereto as
Appendix B. As between the parties, the assignment and transfer shall be
effective from the date and the time hereof. Xxx.xxx shall be responsible for
filing the Transfer Form on the Closing Date and ensuring that Network
Solutions, Inc. effects the transfer of the Domain Name and for notifying Heyami
of such transfer within two (2) days of receipt of notification of such
transfer. As of the date of such assignment and transfer, it shall become the
obligation of Heyami, as its sole cost and expense, to prosecute the trademark
applications for registering and Xxx.xxx shall have no further obligation with
respect to such prosecution except to provide pertinent information and to sign
all lawful documents and provide evidence within the knowledged an control of
Xxx.xxx.
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Article 6. Within one (1) day of the date hereof, Xxx.xxx shall:
6.1 Remove all of its content from the web site associated with the
Domain Name and replace it with the latest content provided by Heyami (or
provide access to Heyami to do the same).
6.2 Delink all Xxx.com-controlled hyperlinks or redirects that
previously connected to the Domain Name.
6.3 Transfer the Domain Name to the domain name servers designated
by Heyami and change all contact information and email addresses for the Domain
Name to those designated by Heyami.
Article 7. The closing of the transactions contemplated herein (the
"Closing") shall take place on the date on which the conditions set forth in
Article 8 are met. The date of the Closing shall be referred to herein as the
"Closing Date." Subject to the conditions to closing set forth in Article 8,
Heyami shall deliver to the escrow agent appointed by the Parties pursuant to
the Escrow Agreement (the "Escrow Agent"), attached hereto as Appendix C, the
Consideration, which shall be released to Xxx.xxx in accordance with the
provisions of the Escrow Agreement.
Article 8. (to " Article I. Conditions Precedent"). Notwithstanding
anything contained herein to the contrary, Heyami shall not be obligated to
deliver to the Escrow Agent the Consideration unless each of the following
conditions has been satisfied (or waived by it at its sole discretion) as of the
Closing Date:
8.1 The representations and warranties made herein by Xxx.xxx are
true and correct as of the Closing Date with the same force and effect as if
made thereon;
8.2 The conditions of Articles 5 and 6 have been satisfied.
Article 9. The Escrow Agreement shall provide that in the event of
any material breach of the representations and warranties under Article 10, the
Escrow Agent shall release the Consideration to Heyami.
Chapter 3
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Representations and Warranties
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Article 10. Xxx.xxx represents and warrants to Heyami that:
10.1 It is a limited liability company duly organized, validly
existing and in good standing under the laws of Nevada. It has the full legal
right, power and authority required to enter into this Agreement and to perform
fully its obligations hereunder. This Agreement has been duly authorized,
executed and delivered by it, and constitutes the valid and binding obligations
of such corporation enforceable against it in accordance with the terms of this
Agreement.
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10.2 It is the entity that registered the Domain Name and has good
and marketable title and is the sole legal and beneficial owner of the Domain
Name free and clear of any third party interests, claims, liens or other
encumbrances or other rights or restrictions whatsoever.
10.3 No license, assignment or legal or equitable charge has been
granted or made in respect of the Domain Name or any interest therein.
10.4 The Domain Name and Trademark do not and will not, when owned,
used, or operated by Heyami, infringe upon any copyright, trademark or any other
intellectual property rights of any third party, and there are no third party
rights that would hinder Heyami's use of the Domain Name or the Trademark and
there will be no such third party rights when the Domain Name and product are
owned, used or operated by Heyami.
10.5 The ownership and use of the Domain Name, the Trademark and
Trademark Applications by Heyami do not and will not violate any relevant laws,
regulations and rules.
10.6 All appropriate and necessary consents, approvals and
authorizations in connection with the transfer of ownership and use by Heyami of
the Domain Name have been obtained and are in full force and effect.
10.7 At the date hereof the Trademark Applications are subsisting and
have been filed or made, and that, to the best of its knowledge and belief after
due inquiry, nothing has been done nor has any event occurred whereby the same
may be declared void or invalidated.
10.8 Schedule II contains a complete and accurate list of all the
countries in which it has filed or made applications for the registration of the
Trademark.
10.9 It has the right of proprietorship in the Domain Name, the
Trademark and the Trademark Application, and that up to the date hereof it is
not aware after due inquiry of any claim which has been made which may affect
the Trademark or the Trademark Applications nor has it charged or encumbered the
same in any way, and should it at any further date discover any such charge or
encumbrance, it undertakes to disclose the same in writing to Heyami as soon as
is possible and to terminate or discharge such charge or encumbrance as soon as
is possible; provided always that all costs and expenses including attorneys'
fees, incurred by Xxx.xxx in connection with such termination shall be borne by
it and not by Heyami.
10.10 It has not granted any registered user or license agreement in
respect of the Domain Name, Trademark or the Trademark Applications, save as
disclosed in writing to Heyami on the date hereof, and should it at any future
date discover any such registered user or license agreement, it undertakes to
terminate such agreement or agreements as soon as is possible and to disclose
the same in writing to Heyami as soon as is possible; provided always that all
costs and expenses, including attorneys' fees, incurred by Xxx.xxx in connection
with such termination shall be borne by it and not by Heyami.
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10.11 It shall not at any time hereafter use the Trademark or any
other xxxx so resembling any of the Trademark as to be likely to deceive or
cause confusion.
10.12 Pending any recordation and/or registration of Heyami as
proprietor of the Trademark Applications, Xxx.xxx will lend its name to any
proceedings for infringement or passing off or other analogous actions which
Heyami may bring against any person wrongfully using of the Trademark in any of
the countries or territories mentioned in Schedule II hereto; provided always
that with respect to all causes of action arising after the date hereof, all
reasonable costs and expenses, including reasonable attorneys' fees, incurred by
Xxx.xxx in connection therewith shall be paid by Heyami on a full indemnity
basis.
10.13 There are not notices, actions, suits, proceedings, claims,
complaints, disputes, arbitrations or investigations (collectively, "Claims")
pending or, to the knowledge of Xxx.xxx, threatened, at law, in equity, in
arbitration or before any Governmental Authority against Xxx.xxx related to the
Domain Name. No Order has been issued by any court or other Governmental
Authority against Xxx.xxx related to the Domain Name purporting to enjoin or
restrain the execution, delivery or performance of this Agreement.
10.14 It has not done any act or failed to do any act, and to the best
of its knowledge and belief after due inquiry, no event has occurred, whereby
the Domain Name, the Trademark or the Trademark Application may have been or may
be declared void or invalidated.
Article 11. Heyami represents and warrants to Xxx.xxx that:
11.1 It is an international business company duly organized, validly
existing and in good standing under the laws of the British Virgin Islands.
11.2 It has the full legal right, power and authority required to
enter into this Agreement and to perform fully its obligations hereunder. This
Agreement has been duly authorized, executed and delivered by it, and
constitutes the valid and binding obligations of such corporation enforceable
against it in accordance with the terms of this Agreement.
Chapter 4
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Miscellaneous
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Article 12. Xxx.xxx hereby agrees to take all actions and to sign and
execute any documents, forms or authorization in form or forms to be specified
by Heyami that may be reasonably required for procuring the registration,
assignment, and absolute vesting of all right, title and interest in the Domain
Name, the Trademark and Trademark Applications, recording or registering the
transfer of rights in or to, or which may arise in respect of any of the, Domain
Name, the Trademark or the Trademark Application hereby assigned. If Xxx.xxx
defaults in signing and/or executing the same, Xxx.xxx hereby appoints Heyami or
its nominee as the true and lawful attorney of Xxx.xxx solely for this purpose,
which appointment is irrevocable and coupled with an interest.
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Article 13. The Parties agree to keep the existence and terms of this
Agreement in strictest confidence and shall not disclose the fact of the
existence of or the terms of this Agreement to any third party.
Article 14. Notices or other communications required to be given by
any Party pursuant to this Agreement shall be delivered in person or sent in
letter form by registered mail or international courier service, in either case
postage prepaid, or by facsimile or similar telecommunications equipment to the
address of the other Party set forth below or to such other addresses as may
from time to time be designated by the other Party through notification to such
Party. Any such notice shall be deemed given when so delivered personally or, if
sent by registered mail, ten (10) days after the date of deposit in the mails
or, if sent by international courier service, three (3) days after the date of
deposit with the courier service or, if delivered by facsimile or similar
telecommunications equipment, at the time of receipt thereof.
Xxx.xxx: Xxxxx & Xxxxx
Attention: Xxxxxx X. Xxxxx
Facsimile No.:000-000-0000 or
000-000-0000
Heyami: Heyami Limited
00/xx/ Xxxxx, Xxxxxxxxx Xxxxx
00 Xxxxxxxx Xxxx
Xxxxxxx, Xxxx Xxxx
Attention: Guy Look
Facsimile No.: 011-852-2123-9588
Article 15. This Agreement may be executed in counterparts, which
counterparts, when taken together, shall constitute a valid and binding
agreement.
Article 16. The execution, validity, interpretation and performance
of, or the resolution of disputes under this Agreement shall be governed by the
laws of the State of New York, the United States of America, without regard to
its principles of conflicts of law.
Article 17. All representations, warranties and obligations in this
Agreement shall survive the Closing.
Article 18. Xxx.xxx hereby agrees to indemnify and hold harmless
Heyami and will pay to Heyami the amount of any loss, liability, claim, damage,
expense (including any reasonable experts', consultants' and attorneys' fees) or
diminution of value, whether or not involving a third-party claim arising,
directly or indirectly, from or in connection with any breach of any
representation, warranty or obligation of Xxx.xxx in or under this Agreement or
in or under any other certificate or document delivered pursuant to this
Agreement. The remedies provided in this Article 18 shall not be exclusive or
limit any other remedies that may be available to Heyami.
[Remainder of page intentionally left blank]
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IN WITNESS WHEREOF, the Parties will have called this Agreement to be
executed by their respective officers thereunto duly authorized, as of the date
first above written.
VORTEXX 2000 LLC HEYAMI LIMITED
By: /s/ Xxxxxx Xxxxx By: /s/ Xxxxx Xxxx
---------------------------------- ----------------------------------
Name: Xxxxxx Xxxxx Name: Xxxxx Xxxx
Title: Managing Member Title: Director
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Appendix A
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Form of Servicemark, Trademark Assignment
-----------------------------------------
SERVICEMARK, TRADEMARK ASSIGNMENT dated as of November , 1999 by and
between VORTEXX 2000 LLC d/b/a Xxx.Xxx, a Nevada limited liability company
("Assignor"), and Heyami Limited, a British Virgin Islands international
business company ("Assignee").
Assignor owns the trademarks and service marks (including the
application for registration thereof (the "Trademark Applications") listed on
Schedule 1 attached hereto (the "Marks"). Pursuant to the Trademark and Domain
Name Assignment Agreement between Assignor and Assignee dated as of the date
hereof, Assignor sold, transferred and assigned to Assignee all of Assignor's
right, title, and interest in, to, and under the Marks (the "Assignment of
Marks"). Assignor and Assignee want to confirm the Assignment of Marks for
purposes of filing the same with the United States Patent and Trademark Office
(the "PTO"). The parties therefore agree as follows.
1. For good and valuable consideration, the receipt and sufficiency
of which is hereby acknowledged, Assignor hereby transfers, assigns, and
otherwise conveys to Assignee, all of Assignor's right, title, and interest in,
to, and under the following:
a. the Marks;
b. the goodwill associated with the Marks; and
c. all rights to proceeds of the foregoing, including, without
limitation, any claim by Assignor against third parties for
past, present, or future infringement of the Marks.
2. Assignor hereby authorizes and requests the PTO to issue the
certificate of registration in respect of the Trademark Application to Assignee
for its sole use, and for the use of its legal representatives and assigns, to
the full end of the term for which such registration may be granted, as fully
and entirely as the same would have been held by Assignor had this assignment
not been made.
Assignor has caused this Trademark Assignment to be duly executed and
authorized as of the date hereof.
VORTEXX 2000 LLC
By:
------------------------------------
Name:
Title:
SCHEDULE I
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DOMAIN NAME
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xxx.xxx
SCHEDULE II
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TRADEMARK AND SERVICE XXXX APPLICATIONS
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Application Application
Number Date Trademark or Service Xxxx Classes
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XXX.XXX
United States
S.N. 75/820105 Oct. 30, 1999 XXX.XXX 38,9
S.N. 75/820106 Oct. 30, 1999 XXX DOT COM 38,9
European Community On or about
Nov. 2, 1999 XXX.XXX 38,9
On or about
Nov. 2, 1999 XXX DOT COM 38,9
[Initial descriptions of services/goods: communications, multimedia and
networking services and apparatus]
STATE OF CALIFORNIA )
: ss.:
COUNTY OF _________ )
On this ____ day of November, 1999, before me personally came
____________, to me known to be the person who signed the foregoing instrument
and who being duly sworn by me depose and state that [he, she] is the __________
of Vortexx 2000 LLC; [he, she] signed the instrument in the name of Vortexx 2000
LLC; and [he, she] had the authority to sign the instrument on behalf of Vortexx
2000 LLC.
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Notary Public
Appendix B
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Form of Registrant Name Change Agreement - Transfer
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