EXHIBIT 10.12
Internet Domain and Trademark Assignment Agreement
This Agreement is to be made effective on January 11, 1999 (the
"Effective Date") between Epicenter Communications, Inc., a Delaware corporation
("Assignor") and PlanetRx, Inc., a California corporation ("Assignee") with
respect to the following facts:
Recitals
A. Assignor is the registered owner of the Internet domains listed
on Exhibit "A" hereto (collectively "Domains").
B. Assignor is owns certain trademark/service xxxx registrations
(listed on Exhibit A) and certain common law trademark/service xxxx rights in
xxxx.xxx, xxxxxxxxx.xxx, xxxxx.xxx, xxxxxx.xxx, xxxxxxxxxxx.xxx, xxxxxxxxxx.xxx,
xxxxxxxx.xxx, xxxxxxx.xxx, xxxxxxx.xxx, xxxxxxxxxx.xxx, xxxxxxxxxx.xxx
(collectively "Trademarks").
C. Assignor has agreed to assign the Domains, Trademark Rights, and
associated goodwill, on the terms set forth below:
Agreement
1. Assignment. Assignor hereby assigns, transfers and conveys to Assignee all
----------
right, title and interest in the Domains and the InterNic registration thereto,
the Trademarks (including all associated goodwill). Assignor further waives all
claims it has to the Domains and Trademarks and agrees to cease all use of the
same.
2. Compensation.
------------
a. 1999 Revenue Participation. Subject to the final sentence in this
--------------------------
Section 2 (a), within ten (10) business days after the end of each calendar
quarter in the year 1999, Assignee shall pay to Assignor or its nominee an
amount equal to fifty percent (50%) of any revenues received by Assignee,
directly from the use and/or exploitation of the Domains, including but not
limited to sublicense fees or royalties, domain sponsorship revenues, and
advertising revenues (collectively, the "1999 Domain Revenues"). In the event
that any 1999 Domain Revenues are due to Assignee but are not paid to Assignee,
Assignor's share thereof, shall thereafter be remitted to Assignor or its
nominee within ten (10) days after Assignee's actual receipt thereof.
Notwithstanding anything else herein, Assignee's maximum payment due to Assignor
hereunder for Assignor's share in the 1999 Domain Revenues shall be limited to
One Hundred Thousand Dollars ($100,000.00),and upon payment of $100,000 to
Assignor or its nominee Assignee shall thereafter be entitled to retain all
further 1999 Domain Revenues and no further payments shall be due to Assignor
hereunder in the year 1999.
b. 2000 Revenue Participation. Subject to the final sentence in this
--------------------------
Section 2 (b), within ten (10) business days after the end of each calendar
quarter in the year 2000, Assignee shall pay to Assignor or its nominee an
amount equal to fifty percent (50%) of any revenues received by Assignee,
directly from the use and/or exploitation of the Domains, including but not
limited to sublicense fees or royalties, domain sponsorship revenues, and
advertising revenues
(collectively, the "2000 Domain Revenues"). In the event that any 2000 Domain
Revenues are due to Assignee but are not paid to Assignee, Assignor's share
thereof, shall thereafter be remitted to Assignor or its nominee within ten (10)
days after Assignee's actual receipt thereof. Notwithstanding anything else
herein, Assignee's maximum payment due to Assignor hereunder for Assignor's
share in the 2000 Domain Revenues shall be limited to One Hundred Thousand
Dollars ($100,000.00), and upon payment of $100,000 to Assignor or its nominee
Assignee shall thereafter be entitled to retain all further 2000 Domain Revenues
and no further payments shall be due to Assignor hereunder in the year 2000, or
thereafter.
c. Records; Rights of Inspection. Assignee shall keep accurate records
-----------------------------
relating to the payments due to Assignor hereunder to the extent necessary or
useful in calculating the 1999 Domain Revenues due to Assignor in the year1999
and the 2000 Domain Revenues due to Assignor in the year 2000. Upon not less
than thirty (30) days' prior notice during the 1999 or 2000 calendar year, such
records shall be open for inspection by a mutually agreed upon certified public
accountant in order to confirm Assignee's compliance with its payment
obligations described in Section 2(a) above. Such inspections shall be during
normal business hours and shall be at Assignor's expense, unless such inspection
discloses an underpayment of 3% or greater in which case Assignee shall be
responsible for such costs.
3. Further Assurances. Assignor shall assist Assignee in every proper way to
------------------
evidence, record and perfect the assignments described in Section 1 above and to
perfect, obtain, maintain, enforce, and defend the rights assigned. For
example, Assignor agrees that it will immediately apply for and effect re-
registration of the Domains in Assignee's name according to InterNic's current
policy.
4. Representations; Warranties. Assignor represents and warrants to the
---------------------------
Assignee that: (a) Assignor is the sole owner (other than the Assignee) of all
rights, title and interest in the Domains and Trademarks and (b) Assignor will
discontinue all further use of the terms Xxxx.xxx, xxxxxxxxx.xxx, xxxxx.xxx,
xxxxxx.xxx, xxxxxxxxxxx.xxx, xxxxxxxxxx.xxx, xxxxxxxx.xxx, xxxxxxx.xxx,
xxxxxxx.xxx, xxxxxxxxxx.xxx, and xxxxxxxxxx.xxx in association with any
internet or world wide web services.
5. Miscellaneous. This Agreement shall be construed pursuant to the laws of
-------------
the State of California without regard to conflicts of laws provisions thereof.
In the event of a dispute hereunder which the parties are not able themselves to
settle, either party may refer such dispute to binding arbitration before the
JAMS/ENDISPUTE tribunal in San Francisco, CA and the award issued in such
proceeding may be enforced in any court of competent jurisdiction. The
prevailing party in such arbitration or enforcement proceeding shall be awarded
its costs thereof, including reasonable attorneys' fees.
XxxXxxxxx.xxx PlanetRx, Inc.
By: By:
Xxxxxxx Xxxxxxxx, President Xxxxxxx X. Xxxxxxx, Chairman & CEO
Exhibit A
LIST OF DOMAINS
xxxx.xxx
xxxxxxxxx.xxx
xxxxx.xxx
xxxxxx.xxx
xxxxxxxxxxx.xxx
xxxxxxxxxx.xxx
xxxxxxxx.xxx
xxxxxxx.xxx
xxxxxxx.xxx
xxxxxxxxxx.xxx
xxxxxxxxxx.xxx
List of Trademark/Service Xxxx Registrations
Xxxxxxx.xxx, Reg. No. 2,082,641
Xxxxxxxxxx.xxx, Reg. No. 2,076,617
Xxxxxx.xxx, Reg. No. 2,076,616
Xxxxxxxxx.xxx, Reg. No. 2,076,595
