The administrator for Australia’s top level domains (auDA) recently introduced significant changes as to how businesses and charities can obtain and maintain .au domain names. The .au Domain Administration Rules: Licensing (Rules) published by auDA govern the licensing of Australian domain names.
The first eligibility requirement under the Rules to obtain and maintain a .au domain is that the applicant have an Australian presence. This is defined to include Australian citizens and permanent residents, companies, businesses, associations and other organisations registered in Australia. From 12 April 2021, holders of Australian trade marks not having any other Australian presence can rely on their trade mark only if the domain exactly matches the trade mark (see further below).
Secondly, further eligibility and allocation criteria apply to particular namespace extensions.
.com.au and .net.au
To obtain (and maintain on renewal) a .com.au or .net.au domain name the applicant must:
- be a commercial entity; and
- the domain name must:
- match or be an acronym of the person’s company, business, statutory or personal name, related body corporate, partnership or trust; or
- match or be a synonym of the name of goods or services provided.
Point 2 does not apply if the applicant relies on its Australian trademark to establish its Australian presence. In this case, the domain name must exactly match the words of a pending or registered Australian trade mark.
Foreign trade mark holders relying on their trademark to satisfy the Australian presence criteria should review their trademark portfolios to ensure they hold a trademark that is an exact match to their Australian domain, and consider applying for new trademarks if required.
Similar rules apply to the .org.au namespace. The
- applicant must be a not for profit entity; and
- domain name must:
- match or be a synonym to the service, program, event, activity, premises or occupation of the applicant; or
- match or be an acronym of the person’s legal name, business or statutory name; or
- match the name of the unincorporated association, trust or Australian trade mark.
For purpose or not for profit organisations should review the domains they use to consider whether or not they need to apply for new trademarks.
Restrictions on domain name use and acquisition
The Rules prohibit certain uses of domain names. For example, monetisation is prohibited for the org.au, asn.au, id.au, edu.au and any State or Territory namespace. Obtaining licences for these namespaces for the sole use of transferring the licence to another person is prohibited. Acquiring a licence for a domain name that is deceptively similar to an Australian namespace is also prohibited – for example, .comm.au.
Applicants should carefully consider any domain name acquisition to ensure the above eligibility criteria are met, and avoid engaging in deceptive conduct.
Where to next?
Any party using domain names as an important part of their business, purchasing a business, becoming a franchisee, distributor or licensee, or otherwise acquiring a domain name as part of some acquisition or expansion, should review and carefully audit the domains intended to be used in the future to make sure they are able to be maintained, acquired and/or used.
Finally, and most importantly, a domain name licence, business name or company name grants no proprietary interest in the domain or trading name. Only a trade mark grants exclusive rights to a name in relation to the registered goods and services.
Contact our Intellectual Property team if you require further advice on domain names or trademarks.