New rules and stricter requirements 2 min read
New rules for licensing .au domain names will apply from 12 April 2021. New registrants, and registrants renewing existing registrations after 12 April 2021, will be subject to stricter requirements.
The new licensing rules will require that registrants:
- have an 'Australian presence': the registrant generally needs to be registered in Australia or otherwise rely upon a trade mark the subject of an Australian application or registration. In effect, this means the .au ccTLD is reserved for those with actual business or personal connections to Australia; and
- meet any eligibility or allocation requirements: this relates to the selection of the specific name, with requirements varying depending on the namespace.
- Some aspects of the new rules, and in particular the allocation rules, remain somewhat unclear, with limited guidance at these initial stages.
- In any case, registrants for domain names that do not exactly match an Australian trade mark will need to consider alternative ways to show Australian presence. For instance, foreign companies may register in Australia or transfer licences to Australian-based subsidiaries. The local registrant can then hold partially matching domain names on behalf of the foreign entity.
- Equally, registrants that currently rely on 'close and substantial connections' to their business will also be affected where domain names do not meet the new allocation requirements.
- If there is any uncertainty about meeting the new allocation requirements and the domain name is within 90 days of the renewal date, registrants can renew existing licences before the new rules take effect on 12 April 2021.
Under the current licensing rules, which will be phased out in April 2021, Australian individuals, registered companies, partnerships, associations and businesses could license .com.au or .net.au domain names that were exact matches, abbreviations or acronyms of the registrant's name or trade mark, or 'otherwise closely and substantially connected' to the registrant.
An Australian trade mark application or registration continues to be a basis for foreign (or local) companies to satisfy the 'Australian presence' requirement. However, when relying on a trade mark to show Australian presence, the domain name must 'exactly match' the words in the trade mark application or registration, with all words in the same order, excluding punctuation or articles such as 'a', 'the', 'and' or 'of'.
For instance, a trade mark owner of THE EXAMPLE DOMAIN could register <theexampledomain.com.au> or <exampledomain.com.au>, but not <example.com.au>, or <exampledomainnames.com.au>.
Where the registrant's domain name exactly matches their trade mark, there are no further eligibility or allocation requirements.
However, if Australian presence may be shown another way (see next section), a registrant may register a domain name that partially matches their trade mark.
The Australian presence requirement is alternatively satisfied where the licensee is incorporated or registered in Australia (see rule 1.4 of the rules). In these circumstances, eligibility and allocation requirements will also limit the possible range of domain names. Rule 2.4.4 provides that a .com.au or .net.au domain name must be a:
- match or acronym of the registrant's name; or
- match or acronym of the name of a related body corporate, partnership or trust; or
- match of the registrant's Australian trade mark registration or application (this is different to where the trade mark is the basis for Australian presence); or
- match or synonym of the name of:
- the registrant's services;
- the registrant's goods;
- an event the person registers or sponsors;
- an activity the person facilitates, teaches or trains;
- premises which the person operates.
A 'match' can be partial (ie including one, some or all words or numbers), but the words must appear in the same order as in the registrant's name or trade mark. The rules state there cannot be any additional words or numbers.
Though this sounds straightforward, it is not entirely clear how these rules will operate or how strictly they will be applied.
To take a new example, a company named Sugar Flour Pty Ltd that sells cakes could register <sugarflour.com.au>, <sf.com.au> or <sugar.com.au>, based on the company's name, but not <floursugar.com.au> or <unrelatedsugar.com.au>. Based on the company's products, they could also register <cakes.com.au>. It is not certain yet whether they could register <sugarflourcakes.com.au>, ie a combination of the company's name and goods.
If you have any questions about the changes and how they may affect your registrations, please don't hesitate to contact someone from our team.