.AU domain names must have a presence in Australia | International network of lawyers

[co-author: Brighid Virtue, Law Graduate at Kalus Kenny Intelex]

Foreign entities wishing to register Australian domain names should be aware that the eligibility requirements have changed and the threshold is now much higher. If a foreign entity relies on a trademark registered in Australia to meet the Australian presence requirement, it must ensure that its domain exactly matches that trademark.

On April 12, 2021, a new set of licensing rules for the .au country code top-level domain (ccTLD) came into effect in Australia.

These new licensing rules amalgamate and update over 30 policies previously published by the Domain Administration Limited (“auDA”), the administrator of the .au domain and the policy body. It is important to note that the new licensing rules place more stringent requirements on foreign entities that apply for registration of .au domains.

The history of the .au ccTLD

In 1986, the Internet Assigned Numbers Authority (the standards organization that oversees the global allocation of IP addresses and root zone management in the domain name system) delegated administration of the .au domain to a Computer programmer from the University of Melbourne named Kevin Robert Elz. Throughout his tenure as a director, Elz developed important eligibility requirements for the registration of Australian domains and is now recognized as preventing a “domain name gold rush” in Australia, like this has occurred in many other countries of the world.

Following the significant growth of the Internet throughout the 1990s and a consequent increase in demand for Australian domains, administration of the .au ccTLD passed through several hands before landing with auDA in 1997.

Since then, the Australian government and the International Corporation for Assigned Names and Numbers (“ICANN”) have formally endorsed auDA as the policy authority and industry self-regulatory body responsible for overseeing, authorizing and to accredit participants in the Australian domain name registration system. .

The old .au licensing rules

Under auDA’s licensing rules, foreign entities are eligible to license a .com.au domain provided they can establish that they have a. presence in Australia. That is, provided that the foreign entity is:

• do business under a trade name registered in an Australian state or territory;
• authorized to trade in Australia; Where
• the registered owner of an Australian trademark or has applied for registration of an Australian trademark.

Under the old AuDA licensing rules, when foreign entities sought to rely on a registered or pending Australian mark, they had to prove that that mark was either:

• an exact match, abbreviation or acronym of the .au domain concerned; Where
• otherwise closely and substantially related to the .au domain.

Historically, foreign entities have favored the use of an Australian mark to satisfy the Australian presence requirement because the term “closely and substantially related” has been interpreted broadly. This meant that foreign entities could register .au domain names that did not exactly match their brand.

In 2017, however, auDA established a Policy Review Committee, which was tasked with reviewing and making recommendations on consolidating and reforming the published policies of auDA. After more than two years of review and public consultation, auDA’s Board of Directors approved the recommendation of the Policy Review Committee to implement new licensing rules.

The new .au licensing rules

As a result of new licensing rules that went into effect this month, the threshold for foreign entities to meet the Australian presence requirement is now much higher.

Under the new rules, if a foreign entity seeks to rely on an Australian trademark registration or application to meet the Australian presence requirement, the domain it seeks to license must be a exact match to the Australian brand.

The new licensing rules define “exact match” to mean a domain name that “is identical to words that are the subject of an Australian trademark.” The domain name must include all the words in the order in which they appear in the Australian trademark, excluding:

• DNS identifiers such as com.au;
• punctuation marks such as an exclamation point or apostrophe;
• items such as “a”, “the”, “and” or “of”; and
• ampersands.

Notably, the new licensing rules apply to all applications for a license or renewal of a domain name license that are made on or after April 12, 2021. Thus, foreign entities with a .au domain may need to consider applying for a new Australian brand that is an exact match to their field, to ensure that they continue to meet the Australian presence requirement.

To access the new licensing rules, visit https://www.auda.org.au/policy/au-domain-administration-rules-licensing.