Changes to rules which affect foreign registration of .au domains

On 12 April 2021, a new set of rules for the .au country code top level domain (ccTLD) comes into effect. All .au ccTLD domain names registered or renewed on or after this date will be subject to the new licensing rules.

Currently, to be eligible for any .au ccTLD an applicant must have a connection to Australia. This is referred to in the licensing rules as an ‘Australian presence’.

There are several ways to meet the Australian presence requirement, including being an owner of, or applicant for, an Australian trade mark (including a pending trade mark application). 

Owning an Australian trade mark or having a pending application is a common way for foreign entities to meet the Australian presence test to register com.au or net.au domain names. This eligibility basis has been impacted by the new rules.

Registrants located in Australia or who meet the Australian presence test in another way are not impacted by the new rules. 

What are the changes?

From April, .au ccTLD’s must be an exact match, abbreviation or acronym of the applicant’s name or trade mark. The current option to rely on a trade mark which is only closely and substantially connected to the domain will be removed.

An exact match is defined as:

“..all the words in the order in which they appear in the Australian Trade Mark, excluding:

  • Domain Name System (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.”

Once the new rules come into effect, a domain must also not include any additional words or numbers that appears in the trade mark application or registration.

How will the changes be applied?

The existing rules will continue to apply to all currently registered domains until they are due for renewal or are transferred after the new rules come into effect on 12 April 2021. All domains that are registered, transferred, or renewed from 12 April 2021 will be subject to the new rules.

If you have an existing domain name and you are unable to meet the new requirement by the renewal date for your domain, the domain registration will expire. While domain name owners can renew a licence up to 90 days before the licence expiry date, the new licence period only begins once the current licence period ends.

What should I do to avoid expiration of my domain?

Foreign entities which currently rely on an Australian trade mark for registration of any .au domain should review their trade mark against their domain. If a domain is not identical to all the words used in the trade mark in the order in which they appear on the Australian Trade Marks Register and without additional words, we recommend applying for a new Australian trade mark.  Relying on an Australian trade mark application or registration is generally the most efficient and cost-effective option for a foreign entity to meet the .au domain eligibility criteria.  Of course, this may not be necessary if the eligibility criteria are otherwise met, such as by incorporation of a local Australian company.

If you have any questions or would like advice on what these changes will mean for you, please do not hesitate to contact one of our Trade Marks attorneys. Kellie Jukkola [email protected]  or Geraldine Rimmer [email protected] are available to assist with any new trade mark applications that may be required to satisfy the new domain eligibility criteria.

 

 



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