Co-written by Kane Fieldsend (Paralegal)
As of 12 April 2021, ‘.au’ domain names will see significant changes regarding how they may be used, who may register them and what can be registered. These changes were announced in late 2020 by.’au Domain Australia Ltd’ (auDA) which is responsible for the development and implementation of the rules for domain names.
As a result of the new rules, registrants may no longer rent, lease, sub-license or permit third parties to use their ‘.au’ domain names unless the domain is ‘.com.au’ or ‘.net.au’, and the third party must be a related body corporate (such as a holding company) which satisfies the ‘Australian presence’ requirement. To satisfy presence, the company must be in some way incorporated under Australian law, or an owner of an Australian trademark. The example the auDA provides is “A foreign natural person whose Australian Trade Mark registration has lapsed no longer has an Australian presence and the licence will be cancelled.” This means that if a company is not an Australian company, they must have an Australian trademark in order to license the domain name. This presence requirement must also be satisfied for any ‘.au’ domain license.
According to the rules, one of the criteria that can be relied upon to apply for a ‘.au’ license is relying on an Australian trademark. However, in these circumstances, the domain name must be an exact match of the trademark. For example, under the current rules, if your business is trademarked as “A Pretty Horse Carousels”, an acceptable domain name could be a variation, abbreviation or acronym of the trademark, such as “aphc.com.au” or “horsecarousels.com.au”. Under the new rules, the only acceptable domain name would be an exact match for the trademark, being “aprettyhorsecarousels.com.au”, or “aprettyhorsecarousels.net.au”. This clearly places greater restrictions on domains relying on trademarks, particularly on international entities who wish to have a ‘.au’ domain. For these entities, unless they have another way of satisfying the Australian presence requirement, will be required to hold an Australian trademark, and for their ‘.au’ domain name to be an exact match of this trademark.
There are alternatives to relying on trademarks to apply for .au licenses, including the domain name being:
- A match for the company, business, legal or personal name;
- An acronym for the person’s company, business, legal or personal name;
- A match for the person’s Australian trademark;
- A match or acronym for a related body corporate (e.g. a holding company);
- A match or acronym of a name of a partnership or trust;
A match or synonym of a service that the person or company provides, goods that are sold, an event sponsored, an activity facilitated, taught or trained, or premises operated and provided at the time of the application.
As for ‘.org.au’ domain names, not-for-profit entities eligible for these domains have a greater range of names that can be registered, including matches or synonyms of the names of the name of a service, program, event or activity which the non-profit organisation provides at the time of the application.If these changes have got you wondering whether you need to action your trademark application to protect your domain name, get in touch and we can step you through the process.
ABOUT AMANDA OLIC:
Amanda is our Head of Commercial and has experience in providing legal advice on a broad range of commercial law matters. Amanda has provided advice to small to medium companies and international companies in relation to contractual advice, employment policies and agreements, disputes and litigation.
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