On 12 April 2021, new rules came into place which affect the com.au, net.au, org.au and asn.au namespaces in the .au domain. The new rules apply to all names created, transferred, or renewed on or after 12 April 2021. They were introduced by .au Domain Administration (auDA) to consolidate the 30+ policies previously in use, increase trust in the .au domain and ensure that the .au domain remains Australian and secure.
While the new rules have introduced a number of changes to the .au domain, their impact will be particularly significant for offshore entities holding a .com.au or .net.au domain name licence who rely on an Australian trade mark to meet the Australian presence requirement, and whose domain name is not an exact match to their Australian trade mark. While differences were allowed under the old rules, the new rules require the domain to be identical to the Australian trade mark.
Use of Australian trade mark to meet the Australian presence requirement
The old rules
In order to be eligible for a domain name in the .com.au domain, registrants need to demonstrate that they have an Australian presence (Australian presence requirement). This requirement remains in place under the new rules (see .au Domain Administration Rules: Licensing, r 1.4 definition of Australian presence).
Under the old rules, an entity could rely on an Australian trade mark (either owned or applied for by them) that was “an exact match, abbreviation or acronym of the registrant’s name or trademark” or “otherwise closely and substantially connected to the registrant” to meet the Australian presence requirement and obtain a licence for a .com.au or .net.au domain name. This allowed offshore entities to hold domain names that were not necessarily the same as the Australian trade mark they used to meet the Australian presence requirement.
The new rules
Under the new rules, if a registrant uses an Australian trade mark as the basis for meeting the Australian presence requirement, their chosen .com.au or .net.au domain name must be identical to the words which are the subject matter of the Australian trade mark. Moreover, the words must be in the same order as in the domain name, excluding the DNS identifiers (such as ‘com.au’), punctuation marks (such as an exclamation point or an apostrophe), articles (such as ‘a’, ‘the’, ‘and ’or ‘of’), and ampersands.
This means, for example, that a company that has met the Australian presence requirement by relying on their Australian trade mark AN ABC COMPANY would be eligible to obtain a licence for domain names such as <anabccompany.com.au> or <abccompany.com.au>, but would not be able to register <companyacb.com.au>, <abc.com.au> or <abccompanies.com.au>.
This means that offshore entities seeking to renew or apply for a domain name in the .com.au or .net.au namespace, which is not an exact match for their Australian trade mark, risk losing their existing domain name licences unless they can meet the Australian presence requirement on another basis.
Australian presence requirement – additional bases
Under rule 1.4 of the new rules, there are a number of bases upon which the Australian presence requirement can be met, including for example, being a company registered under the Corporations Act 2001 (Cth), an Incorporated Association under State or Territory legislation, an entity issued with an Australian Business Number under the A New Tax System (Australian Business Number) Act 1999 (Cth), or a Cooperative registered under State or Territory legislation and which appears on the State or Territory register of cooperatives.
If a registrant is able to meet the Australian presence requirement on one of these bases, they will be eligible to renew or apply to licence a domain name that is only a partial match of their trade mark, subject to some restrictions. The restrictions are that they can only obtain a domain that is:
- a match of the Person’s company, business, statutory or Personal name; or
- an acronym of the Person’s company, business, statutory or Personal name; or
- a match of the Person’s Australian Trade Mark; or
- a match to or an acronym of a name of a related body corporate or
- a match or an acronym of a name of a Person’s partnership or trust; or
- a match or synonym of the name of the Person’s services, goods, events, activities or premises.
As such, domain registrants relying on their Australian company or business names to meet the Australian presence requirement do have slightly wider eligibility for domain names when compared to those relying on their Australian trade mark(s) alone.
It should be expected that registrars will apply the narrowed eligibility requirements strictly, although there has been limited guidance from auDA on this point.
However, the good news is that the issue is not insurmountable. For any businesses who hold .com.au. .net.au, .asn.au or .org.au domain names under the old and more flexible licencing rules (or would like to apply for a domain name in these namespaces), and who cannot meet the Australian presence requirement on another basis, a simple approach to overcoming this issue would be to apply for a trade mark which exactly matches the domain name currently held.
If you would like to discuss the changes or require any advice or assistance, please do not hesitate to contact our Intellectual Property team.