The .au Domain Administration Ltd (auDA), which administers rules for .au domain names in Australia, has announced some rule changes that will come into effect from today, 12 April 2021. Each .au domain name created, transferred, or renewed on or after this date will be subject to the new licensing rules. These rule changes are aimed at ensuring that the .au country code Top Level Domain (ccTLD) is secure to use, and that action can be taken when a domain is being used illegally.
New rules to register a .au domain name
The requirements for registering a .au domain name in Australia include showing a connection with Australia - the ‘Australian presence’ test. While Australian entities can show this by providing their ACN number or a business registration, foreign entities will usually have to rely on a trade mark registration or application. Under the earlier rules, it was possible to register a .au domain name if the domain name was generally connected to an Australian trade mark registration or application. Under the new rules, the domain name must be an exact match of the trade mark in question (excluding minor elements such as the domain name identifier e.g. ‘.com.au’, punctuation, and articles such as ‘a’ and ‘the’).
For example, a foreign entity who has a registered trade mark or pending application in Australia for the words ‘the golden beaches of the world’ could register thegoldenbeachesoftheworld.com.au or goldenbeachesoftheworld.com.au. It could not, however, register goldenbeaches.com.au or beachesoftheworld.com.au as these include only a part of the trade mark.
The impact on foreign entities
This rule change will have implications for foreign entities who have been relying on a ‘close-match’ trade mark registrations or applications in Australia to show Australian presence. They will now need to ensure that their domain name is an exact match before the end of the licensing period. Alternatively, they could rely on other methods to show Australian presence, such as transferring the domain name to an Australian subsidiary, registering with ASIC as a foreign corporation trading in Australia, or trading under a registered business name in Australia.
Other major changes to the licensing rules include:
- Prohibition of renting or leasing of a .au domain name to a third party. This is to ensure that the identity of who is really behind a particular domain name in the .au ccTLD is clearly known.
- Prohibition of selling, renting, or leasing sub-domains to third parties.
- Clarification that to hold a .au domain name, one must have ‘contractual capacity’ i.e. de-registered companies and deceased individuals are not able to hold a domain name.
- The new ‘related body corporate’ rule which enables a company within a corporate group to apply for and hold a .au domain name on behalf of another company in the group.
- Ability to reserve names which are essential to the administration of government.
The revised set of rules is available at https://www.auda.org.au/policy/au-domain-administration-rules-licensing
If you have any questions about your eligibility to hold a .au domain name, or need any assistance in selecting, registering, or renewing domain names or trade marks, please get in touch with us. Our intellectual property team has extensive experience in assisting with domain name registrations and trade marks.
This memo presents an overview and commentary of the subject matter. It is not provided in the context of a solicitor-client relationship and no duty of care is assumed or accepted. It does not constitute legal advice.
© Moulis Legal 2021
