Whereas on November 25, 1998, the U.S. Department of Commerce ("DoC" or "Licensor") and the Internet Corporation for Assigned Names and Numbers ("ICANN" or the "Licensee") entered into a Memorandum of Understanding establishing a joint project under which ICANN is assuming the responsibilities of overseeing the technical management of the Internet, including the Domain Name System (DNS); and,
Whereas the term "InterNIC" is a concept for an integrated network information center that was developed in cooperation with the U.S. Government and provides public information on technical management of the Internet valuable to users worldwide; and,
Whereas the DoC is using and owns a U.S. service mark registration on the name InterNIC®, U.S. Registration No. 1,874,125 (hereinafter "InterNIC" or "the mark"); and,
Whereas, during the advent of competition in domain name registration services for the .com, .net, and .org top-level domains (TLDs), and in furtherance of the InterNIC concept, the DoC has managed an InterNIC web site as a neutral stand alone web site providing Internet users worldwide with a public directory of all domain name registrars accredited in the .com, .net, and .org top-level domains; a list of Frequently Asked Questions; access to "Whois" registration information for .com, .net, and .org; and other information about technical aspects of the DNS; and,
Whereas as contemplated by the Memorandum of Understanding, as amended, ICANN is in the process of implementing new TLDs in addition to .com, .net, and .org, creating a need among Internet users for a neutral public-information resource about the new TLDs, in addition to the continuing need for information about .com, .net, and .org; and,
Whereas a significant aspect of ICANN's functions includes informing Internet users of information relevant to the operation and technical management of the Internet; and,
Whereas DoC and ICANN have concluded that the goals of the joint project established by the Memorandum of Understanding will be best served by ICANN assuming responsibility for operation of the InterNIC web site and other InterNIC services; and,
Whereas DoC desires to enable ICANN to assume this responsibility by authorizing use of the mark in connection with the joint project; and,
Whereas ICANN desires to use the mark in association with its activities in furtherance of the Memorandum of Understanding and in continuance of the InterNIC concept as a neutral network information resource;
Now, therefore, in consideration of the mutual promises herein contained, it is agreed that:
1. Grant of License: The Licensor hereby grants to the Licensee a non-exclusive, worldwide, royalty-free right to use the mark for the purposes described herein. ICANN agrees that it will not use the name InterNIC® for the purpose of providing domain name registry or registrar services. Further, ICANN agrees that it will not assign or sub-license the mark to another entity for such purposes.
2. Quality Control: The Licensor shall have the right, at all reasonable times, to inspect the Licensee's goods, services, and promotional activities employing the name and/or logo to ensure that such use is of proper quality and otherwise consistent with this License.
3. Duration and Termination: This License shall terminate immediately upon the termination of the above referenced Memorandum of Understanding between the Licensee and Licensor.
Upon termination of this License, all rights of the Licensee to use the mark shall immediately terminate. In the event of a breach of any of the terms and conditions of this License by the Licensee, the Licensor shall give Licensee written notice of such breach. In the event Licensee does not cure such breach within thirty (30) days, Licensor may immediately terminate this License by notifying the Licensee in writing of such termination.
4. Assignments and Sub-Licenses: This License is not assignable, and any attempt by the Licensee to assign any portion of the License shall be deemed a breach of this License and shall be cause for termination. The Licensee is authorized to grant a sub-license for purposes of procuring services to manage an InterNIC web site as a stand alone web site providing Internet users worldwide with a public directory of all accredited domain name registrars, a list of Frequently Asked Questions, access to "Whois" registration information, and other information about technical aspects of the DNS.
5. Sale of Licensee if Not an Individual: If Licensee is dissolved, or if Licensee (or the majority of the assets thereof) is sold to, acquired by or merged with another entity, Licensor shall have the right to terminate the License at will.
6. Registration of Domain Names: Upon execution of this License and throughout its term, the Licensor shall request the appropriate registration authorities to change the registered holder of the Internet domain names "internic.net," "internic.org," "internic.com," and any other Internet domain names containing the word "internic" or confusingly similar words in the Licensor's control (collectively, the InterNIC Domain Names"), to the name of the Licensee. During the term of this License and at its own expense, the Licensee shall maintain registration of "internic.net," "internic.org," and "internic.com" in its name and is authorized to establish and maintain the registration of other InterNIC Domain Names in its name. Licensee will notify Licensor of any such registrations within thirty (30) days of the registration. Upon receiving a written request from the Licensor within sixty (60) days after termination of this License to change the holder of any InterNIC Domain Name from the Licensee to the Licensor or its designee, the Licensee shall initiate the registration transfer requests necessary to cause the change to occur.
7. Validity and Ownership of Mark: The Licensee or any sub-licensee is prohibited from challenging or contesting in any way the Licensor's registration of the mark with the U.S. Patent & Trademark Office, or with any other trademark office; the validity of the mark; or the Licensor's exclusive worldwide ownership of the mark.
8. Use of Mark:
(a) The Licensor considers the mark to be its service mark, and holds it out to the public as such. The Licensee, when using the mark in a manner that would constitute infringement in the absence of this License, shall clearly indicate that it is Federally registered with the U.S. Patent & Trademark Office. Such indication of registration shall be in the form of the "®" designation.
(b) At such time that the mark is registered in relevant foreign countries, the Licensee may also be required to make a similar indication, as appropriate.
9. Infringement: The Licensee is required to notify the Licensor of any potential infringement of the mark of which the Licensee is aware. The Licensor retains the right to determine what constitutes infringement and the course of action to be taken to address it.
Further, in coordination with the Licensor, the Licensee agrees to share responsibility for the enforcement of the mark against infringement, and to take reasonable measures, consistent with the Licensee's other responsibilities for DNS management, to assist DoC to do the following:
(a) assist in policing the mark among the various domain name registries worldwide, and assist in bringing domain name disputes in those registries in which the mark is found to be infringed;
(b) assist DoC in working with national and local authorities, including the courts, in countries where the mark may be being infringed, to assist in enforcing the mark and prosecuting infringers thereof; and
(c) notify the Licensor of any claims of which the Licensee is aware that the licensed mark is infringing the name, logo or trademark of another.
10. Insolvency or Bankruptcy: Licensor shall have the right to immediately terminate the license if the Licensee discontinues business, or becomes insolvent, or if any action relating to the bankruptcy or insolvency of the Licensee is instituted.
11. Governing Law: This License shall be interpreted and implemented in accordance with the Federal common law as interpreted by the U.S. District Court for the District of Columbia.
12. Foreign Trademarks and Service Marks: Licensee agrees to provide all lawful assistance, as reasonable, to Licensor should Licensor decide to register the mark in foreign countries. Licensee shall comply with all applicable legal requirements governing trademark and service mark use, including but not limited to, registered user requirements. Licensee agrees that all use of the name and/or logo by Licensee shall inure to the benefit of the Licensor.
13. Indemnification: The Licensee agrees to indemnify and hold the Licensor harmless from any and all claims, damages, and attorneys' fees arising from the use of the mark by the Licensee and its operations under the License, except to the extent that any such claims, damages, or attorneys' fees arose in connection with any act or failure to act by the U.S. Department of Commerce or any agency, department or subdivision thereof.
14. Prior Agreements: This License is intended to coexist with other written agreements between the parties, including the Memorandum of Understanding. This License sets forth and contains the entirety of representations, understandings, and agreements of the parties hereto and merges all prior representations, understandings, and agreements with respect to this License. This License may be amended only through a written instrument executed by a duly authorized representative of each of the Parties hereto.
In witness whereof, the parties have caused this document to be duly executed as of the latter of the two dates below.
U.S. DEPARTMENT OF COMMERCE INTERNET CORPORATION FOR
ASSIGNED NAMES AND NUMBERS
Name: James A. Dorskind Name: Louis Touton
Title: General Counsel Title: Vice-President
Date: January 8, 2001 Date: 8 January 2001