EXHIBIT 10.1
TRADEMARK AND DOMAIN NAME PURCHASE AGREEMENT
THIS TRADEMARK AND DOMAIN NAME PURCHASE AGREEMENT ("Agreement"), effective
as of 14, November, 2005, is by and among Payment Data Systems, Inc., a Nevada
corporation, and Xxxxx.xxx, Inc., a Delaware corporation, each having a
principal place of business at 00000 Xxx Xxxxx, Xxx Xxxxxxx, Xxxxx 00000
(hereinafter together referred as "Seller") and Alivio Holdings, LLC, a Delaware
limited liability company, having a principal place of business at 0000 Xxxxx
Xxxxx Xxxxxx, Xxxxx 000, Xxx Xxxxx, Xxxxxxxxxx 00000 ("Buyer") (together, Buyer
and Seller shall hereinafter be identified as the "Parties" or individually as a
"Party").
WHEREAS, Seller adopted, owns and has continuously used "xxxxx.xxx" as a
trademark for dissemination of advertising for others via an on-line electronic
communications network; electronic xxxx presentment and payment information via
a global computer information network; consulting and technical assistance in
the field of designing, hosting, maintenance, operating, managing, advertising,
and marketing on-line commerce web sites (the "Xxxx");
WHEREAS, Buyer wishes to acquire Seller's rights worldwide to the Xxxx and
the goodwill of Seller's business symbolized thereby and associated therewith;
WHEREAS, Seller is willing to assign to Buyer its rights in and to the
Xxxx, along with the goodwill of Seller's business symbolized thereby and
associated therewith on the terms and conditions hereinafter provided;
WHEREAS, Seller is the sole owner of the Domain Name and the related
Intellectual Property Rights (each as defined below); and
WHEREAS, Buyer wishes to purchase from Seller and Seller wishes to sell and
assign to Buyer the Domain Name and the related Intellectual Property Rights on
the terms and conditions hereinafter provided.
NOW, THEREFORE, in consideration of the foregoing and the mutual promises
and consideration hereinafter set forth, the Parties agree as follows:
1. As used in this Agreement the following terms shall have the following
meanings:
(a) "Acquired Assets" shall mean the Domain Name, Intellectual Property
Rights and the Xxxx.
(b) "Domain Name" shall mean the domain address xxx.xxxxx.xxx that is
registered with Network Solutions, LLC in the United States and all applicable
foreign jurisdictions. The Domain Name does not include any web pages, computer
software, copyrights, patent rights, trade secrets, or other assets of Seller
that may be or may have been associated with the Domain Name.
(c) "Intellectual Property Rights" shall mean any trademark, right of
trademark registration or re-registration, common law trademark right and
goodwill associated with the Xxxx and the Domain Name, whether in the United
States or any foreign jurisdiction, including, but not limited to, the Xxxx. The
Intellectual Property Rights do not include any web pages, computer software,
copyrights, patent rights, trade secrets, or other assets of Seller that may be
or may have been associated with the Xxxx or the Domain Name.
2. At the Closing (as hereinafter defined) Seller will assign to Buyer all of
Seller's right, title and interest throughout the world in and to the Xxxx
(including, without limitation, U.S. Trademark Registration No. 2568868 and U.S.
Trademark Registration No 2555338, collectively the "Trademark Registrations"),
together with the goodwill of Seller connected with and symbolized by the Xxxx,
and together with all claims for past infringement(s) of the Xxxx including,
without limitation, the right to xxx for, collect, and recover damages and
profits for the same. Buyer specifically acknowledges that all assets of Seller
other than the Acquired Assets including, but not limited to, the CLICK YOUR
BILLS GOODBYE xxxx and U.S. Trademark Registration No. 2,539,815 associated
therewith, are expressly excluded from this Agreement and shall remain the sole
property of Seller.
3. Buyer shall deliver to Seller, on the Closing Date (as hereinafter
defined), the sum of nine hundred fifty thousand dollars ($950,000) in the form
of wire transfer of immediately available funds.
4. At the Closing, Seller will (a) execute and deliver a trademark
assignment in the form attached hereto as Appendix A, along with Seller's
complete application and registration files for the Xxxx and (b) execute and
deliver to Buyer a signed, dated, and fully notarized original Registrant Name
Change Agreement in a form acceptable to Go Daddy Software, Inc. or allow for
the successful domain transfer through the interNIC system, transferring to
Buyer the entire right, title, and interest in and to the Domain Name.
5. At the Closing, Buyer and Seller will execute and deliver the following
documents and instruments each of which shall be in a form mutually satisfactory
to Buyer and Seller:
(i) Xxxx Payment Services Agreement; and
(ii) Non-Competition Agreement;
6. Seller agrees to assign and, upon consummation of the transactions, hereby
does assign to Buyer all rights in the Domain Name and the related Intellectual
Property Rights. Seller further agrees to cooperate as necessary in the transfer
of the Domain Name and the related Intellectual Property Rights to Buyer. Seller
agrees not to use, register, or attempt to register any domain name, xxxx, name,
or other designation of origin which includes the term "xxxxx.xxx" (or any
variation thereof that is likely to cause confusion). Except as set forth in
this Agreement, Seller agrees not to use the term "xxxxx.xxx" (and variations
thereof that are likely to cause confusion) as a domain name, trademark, service
xxxx, trade name, or other designation of source after the Closing Date of this
Agreement. Buyer specifically acknowledges that Seller shall have the right to
continue its business under any name, xxxx, or domain name that is not likely to
cause confusion with respect to the Xxxx or the Domain Name including, but not
limited to, "xxxxx.xxx," "xxxxxxxx.xxx," and "xxxxxxxxxx.xxx." Buyer further
acknowledges and agrees that Seller shall have the right to continue to operate
its business using the "xxxxx.xxx" Domain Name and Xxxx for a period of 60 days
after the Closing Date or until such time as the Parties have completed the
process of converting the "xxxxx.xxx" web site of Seller to another domain name,
whichever occurs earlier. Buyer agrees to cooperate with Seller in such
conversion process, and Buyer agrees that it will not change any IP addresses,
DNS settings, or other material aspects of the "xxxxx.xxx" web site until the
Parties mutually agree in writing that the conversion process is complete.
7. Except as set forth in this Section 7, Buyer shall not assume, and Buyer
shall not be deemed to have assumed nor agreed to pay, perform, fulfill or
discharge, any contract or agreement (whether written or oral), liability or
other obligation of Seller, including, without limitation, any liability
relating to the transfer of an Acquired Asset. Buyer hereby assumes all losses,
costs, liabilities and obligations that arise on or after the Closing Date and
relate solely to the Acquired Assets (the "Assumed Liabilities").
8. Seller hereby represents and warrants as follows:
(a) Seller is the owner of the Xxxx as applied to the goods listed above
and has the corporate right to enter into this Agreement and the attached
assignments; Seller does not know of any prior use of the Xxxx or any third
party claim of any prior use of the Xxxx or any confusingly similar xxxx on or
in connection with the same or similar goods or services; and, to the knowledge
of Seller, there are no challenges to Seller's ownership of the Xxxx or its
right to assign the Xxxx and the associated goodwill to Buyer.
(b) Seller has not abandoned use of the Xxxx and Seller has reasonably
continuously used the Xxxx in commerce since its adoption, as set forth in the
Trademark Registrations, in connection with the goods or services listed in the
Trademark Registrations.
(c) Except for a fictitious business name registered in the city of San
Antonio and the State of Texas which Seller will terminate within 30 days of the
Closing, and other than the Trademark Registrations and the Domain Name, Seller
has filed no applications and owns no registrations or other claims to ownership
relating to any trademark, service xxxx, trade name, or fictitious business name
application or registration for the Xxxx worldwide.
(d) Seller is the owner of the Domain Name and the related Intellectual
Property Rights and has the exclusive right to enter into this Agreement and
transfer ownership of the Domain Name and the related Intellectual Property
Rights to Buyer. No third party has challenged or, to the knowledge of Seller,
has threatened to challenge, or to Seller's knowledge, has the right to
challenge Seller's ownership of the Domain Name and the related Intellectual
Property Rights or Seller's right to transfer ownership of the Domain Name and
the related Intellectual Property Rights to Buyers.
(e) Seller has the requisite corporate power and authority to execute and
deliver, and consummate the transactions contemplated by this Agreement and to
carry out all actions required of it pursuant to this Agreement.
(f) Seller has obtained all necessary authorizations and approvals from its
Board of Directors required for the execution and delivery of this Agreement and
the consummation of the transactions contemplated hereby. This Agreement has
been duly executed and delivered by Seller and constitutes the legal, valid and
binding obligation of Seller enforceable against Seller in accordance with its
terms, except as the enforceability thereof may be limited by any applicable
bankruptcy, reorganization, insolvency or other laws affecting creditors rights
generally or by general principles of equity.
(g) The execution and delivery by Seller of this Agreement and the
consummation by Seller of the transactions contemplated hereby, will not: (a)
violate or conflict with any provision of the Articles of Incorporation or
Bylaws of Seller, as amended to date; or (b) constitute a violation of, or be in
conflict with, or constitute or create a default under, or result in the
creation or imposition of any encumbrances upon any of the Acquired Assets
pursuant to: (i) any contract, agreement or instrument to which Seller is a
party or by which Seller or the Acquired Assets is bound; or (ii) any statute,
judgment, decree, order, regulation or rule of any court or governmental or
regulatory authority applicable to Seller or the Acquired Assets or by which any
of the Acquired Assets is bound.
(h) No consent, approval or authorization of, or registration,
qualification or filing with, any governmental agency or authority is required
for the execution and delivery by Seller of this Agreement or for the
consummation by Seller of the transactions contemplated hereby, except for the
filing of an appropriate current report on Form 8-K with the Securities and
Exchange Commission.
(i) No action, suit, claim, proceeding or investigation is pending or, to
the knowledge of Seller, threatened or contemplated or expected, relating to,
involving or affecting the Acquired Assets or which questions the validity of
this Agreement or challenges any of the transactions contemplated hereby, nor,
to the knowledge of Seller, is there any reasonable basis for any such action,
suit, proceeding or investigation.
(j) Seller is the lawful owner of all of the Acquired Assets, and has the
full right to sell, convey, transfer, assign and deliver the Acquired Assets,
without the need to obtain the consent or approval of any third party. All of
the Acquired Assets are free and clear of any security interests, liens, claims,
charges, options, mortgages, debts, leases (or subleases), conditional sales
agreements, title retention agreements, encumbrances of any kind, material
defects as to title or restrictions against the transfer or assignment
(collectively, "Encumbrances"). Seller will convey the Acquired Assets to Buyer
by deeds, bills of sale, certificates of title and other instruments of
assignment and transfer, effective in each case to vest in Buyer, and Buyer will
have, good, valid and marketable title and (where applicable) record title to,
and/or the right to use, all of the Acquired Assets, free and clear of all
Encumbrances.
(k) Except for Dutchess Advisors LLC, Seller has not retained, utilized or
been represented by any broker, agent, finder or intermediary in connection with
the negotiation or consummation of the transactions contemplated by this
Agreement. Seller agrees to indemnify and to hold harmless Buyer from any
liability for any commission or compensation in the nature of a finders' fee
(and the costs and expenses of defending against such liability or asserted
liability) for which such Seller or any of its officers, employees, or
representatives is responsible.
9. Except as set forth in paragraph 6, Seller agrees that it shall cease use
of the Xxxx following the Effective Date.
10. For three (3) years after the Effective Date, Buyer will allow Seller to
have pre-existing subscribers to the "xxxxx.xxx" web site log in to the new
"xxxxx.xxx" web site operated by Buyer and be redirected to another web site
designated by Seller.
11. (a) Seller agrees to indemnify and hold Buyer harmless from and with respect
to any costs, losses, obligations, damages, lawsuits, deficiencies, claims,
demands, and expenses (whether or not arising out of third-party claims),
including, without limitation, reasonable attorney's fees, interest, penalties,
costs of mitigation, defense or settlement (collectively, "Losses"), arising out
of, resulting from or incident to: (i) any claim that the Acquired Assets, or
the use, thereof, infringes or misappropriates any trademark or other
intellectual property or other proprietary right of any person or (ii) any
breach of any of Seller's representations or warranties or covenants.
(b) Buyer agrees to indemnify and hold Seller harmless from and with
respect to any Losses arising out of, resulting from or incident to the Assumed
Liabilities.
12. The Parties agree that this Agreement shall inure to the benefit of and
be binding upon each of their respective agents, representatives, shareholders,
members, officers, directors, employees, assigns, subsidiaries, parent
companies, and predecessor or successor companies.
13. In the event of any action, proceeding or arbitration to interpret or
enforce the terms of this Agreement, the prevailing party in such action,
proceeding or arbitration shall be entitled to recover its costs, expenses and
reasonable attorneys' fees incurred in connection with such action, proceeding
or arbitration. The Parties shall each bear their own costs and fees incurred
in effectuating this Agreement.
14. It is the belief of the Parties that this Agreement does not contain any
provisions contrary to law. However, if any part of this Agreement shall be
determined to be illegal, invalid or unenforceable, that part shall be severed
from the Agreement and the remaining parts shall be valid and enforceable, so
long as the remaining parts continue to fulfill the original intent of the
Parties.
15. This Agreement and the documents and instruments described in Sections 4
and 5 of this Agreement (collectively, the "Transaction Documents") constitute
the entire agreement between the Parties, and supersede any and all prior
agreements or understandings, written or oral, between them relating to the
subject matter herein and therein. No other promises or agreements shall be
binding upon the parties with respect to this subject matter unless contained in
the Transaction Documents or separately agreed to in writing and signed by an
authorized representative of each of the Parties.
16. The undersigned represent that they have authority to execute this
Agreement on behalf of the respective parties and to carry out all obligations
imposed hereunder.
17. All transfer and sales taxes payable with respect to the sale and
conveyance of the Acquired Assets to Buyer shall be paid by Seller. All other
fees and expenses incurred in connection with the negotiation, execution and
delivery of this Agreement, and the consummation of the transactions
contemplated herein, shall be borne separately by each party hereto.
18. All notices, demands and other communications hereunder shall be in
writing or by facsimile transmission, and shall be deemed to have been duly
given if delivered personally or if mailed by certified mail, return receipt
requested, postage prepaid, or if sent by overnight courier, or sent by
facsimile transmission, as follows:
If to Seller, to:
Payment Data Systems, Inc.
Xxxxx 000
Xxx Xxxxxxx, Xxxxx 00000
Facsimile: 000-000-0000
Attention: Xxxxx Xxxx
With a copy to:
Xxx Xxxxx Xxxxxxxx Incorporated
000 Xxxx Xxxxx Xxxxxx, Xxxxx 0000
Xxx Xxxxxxx, XX 00000
Facsimile: 000-000-0000
Attention: Xxxxxx X. Xxxxxx, Esq.
If to Buyer, to:
Alivio Holdings, LLC
0000 Xxxxx Xxxxx Xxxxxx, Xxxxx 000
Xxx Xxxxx, XX, XXX 00000
Facsimile: 000-000-0000
Attention: Xxxxxx Xxxxxxx
With a copy to:
White & Xxx
000 Xxxxxxxxxxx Xxxx
Xxxxx Xxxx, XX 00000
Facsimile: (000) 000-0000
Attention: Xxxxxxxx X. Xxxx, Esq.
Any such notice shall be effective: (a) if delivered personally, when received;
(b) if sent by overnight courier, when receipted for; (c) if mailed, three (3)
days after being mailed as described above; and (d) if sent by facsimile
transmission, upon confirmation of successful and complete transmission. Any
party may change its address from time to time by means of notice given to the
other parties in the manner provided in this Section.
19. The validity and construction of this Agreement shall be governed by the
internal laws (and not the conflicts rules) of the State of Delaware.
20. This Agreement may be executed in multiple counterparts, each of which
shall be deemed an original, but all of which together shall constitute one and
the same instrument.
21. The consummation of the transactions contemplated by this Agreement (the
"Closing") shall occur at 11:00 a.m., San Antonio, Texas time, at the offices of
Xxx Xxxxx Xxxxxxxx Incorporated, 000 Xxxx Xxxxx Xxxxxx, Xxxxx 0000, Xxx Xxxxxxx,
XX 00000 on November 16, 2005 or at such other time, date and place as the
Parties may mutually agree. The date, as thus determined on which the Closing
will be held is herein referred to as the "Closing Date." The Closing is
contingent upon the execution and delivery of the Transaction Documents on or
prior to the Closing Date and neither Party shall have any obligation to
consummate the transactions contemplated hereby, unless or until all of the
Transaction Documents are satisfactory to such Party, in such Party's sole
discretion.
IN WITNESS WHEREOF, the Parties hereto have caused this instrument to be
executed by their duly authorized representatives as of the date first above
written.
ALIVIO HOLDINGS, LLC
By:
Name:
Title:
PAYMENT DATA SYSTEMS, INC.
By:
Name:
Title:
XXXXX.XXX, INC.
By:
Name:
Title:
APPENDIX A
TRADEMARK ASSIGNMENT
THIS ASSIGNMENT ("Assignment"), effective as of ________________, is by and
among Payment Data Systems, Inc., a Nevada corporation, Xxxxx.xxx, Inc., a
Delaware corporation, each having a principal place of business at 00000 Xxx
Xxxxx, Xxx Xxxxxxx, Xxxxx 00000 (hereinafter collectively referred as the
"Assignor") and Alivio Holdings, LLC a Delaware limited liability company having
a principal place of business at 0000 Xxxxx Xxxxx Xxxxxx, Xxxxx 000, Xxx Xxxxx,
Xxxxxxxxxx 00000 ("Assignee").
WHEREAS, Assignor has adopted, owns and has used "xxxxx.xxx" as a xxxx for
dissemination of advertising for others via an on-line electronic communications
network; electronic xxxx presentment and payment information via a global
computer information network; and consulting and technical assistance in the
field of designing, hosting, maintenance, operating, managing, advertising, and
marketing on-line commerce web sites ("the Xxxx").
WHEREAS, Assignor desires to assign to Assignee all of Assignor's right,
title and interest in and to the Xxxx worldwide together with the goodwill of
the business pertaining thereto.
NOW THEREFORE, for good and valuable consideration, receipt of which is
hereby acknowledged, Assignor does hereby sell, assign, set over and transfer to
Assignee all of Assignor's right, title and interest throughout the world in and
to the Xxxx and any registrations and other applications therefor worldwide
(including, without limitation, U.S. Trademark Registration No. 2568868 and U.S.
Trademark Registration No 2555338, collectively the "Trademark Registrations"),
together with the goodwill of Assignor connected with and symbolized by the
Xxxx, and together with all claims for past infringement(s) of the Xxxx,
including without limitation the right to xxx for, collect, and recover damages
and profits for the same.
IN WITNESS HEREOF, the undersigned represent that they have authority to
execute this Agreement on behalf of the respective parties and to carry out all
obligations imposed hereunder.
ALIVIO HOLDINGS, LLC XXXXX.XXX, INC.
By: By:
Name: Name:
Title: Title:
PAYMENT DATA SYSTEMS, INC.
By:
Name:
Title:
