The Australian Country Code Top Level Domain Administrator .au, .au Domain Administration Limited (auDA), introduced the Administration rules for the .au domain: Licenses (Rules). The rules consolidate and update over 30 DA published policies that address registrant obligations and the claims process into a single, uniform licensing system. The rules are a corollary of the policy reform recommendations of the 2017 Policy Review Panel (Review) and the auDA management response to the review. AuDA CEO Rosemary Sinclair AM said the introduction of the rules “signifies an important step forward in the governance of .au: modernizing the policy framework, ensuring that the .au domain can meet changing user needs. Internet and continue to build trust in .au namespaces ”.
The rules introduced key changes regarding, among others:
- eligibility and allocation rules for certain namespaces in the .au domain;
- the terms and conditions of .au domain names, such as rules regarding subdomains, third party use and monetization;
- complaints and cancellations processes; and
- the process by which auDA manages compliance with licensing rules.
The scope of the reform is vast. In this article, we focus on the new Australian trademark registration rule to establish Australian presence when applying for a license in the com.au and net.au namespaces.
With a few exceptions, the rules went into effect on April 12, 2021.
Rely on an Australian brand to establish an Australian presence when applying for a license in the com.au and net.au namespaces
The threshold required to be licensed in any namespace in the .au domain is an Australian presence. An Australian presence can be established, among other things, by being an Australian citizen or permanent resident, a company registered under the Corporations Act 2001 (Cth) or an entity with an Australian business number. In the case of natural and legal persons domiciled abroad, this may raise regulatory and tax considerations. An Australian presence can also be established by being the applicant or owner of an Australian trademark that appears in IP Australia’s trademark database.
Under paragraph 2.4.5 of the Rules, a person who relies on an Australian trademark to establish an Australian presence when applying for a license under the com.au and net.au namespaces will only be permitted to register an domain name which is an exact match with the words which are the subject of the Australian mark. Due to the definition of “exact match” in paragraph 1.4 of the Rules, the domain name requested must be identical to the Australian mark, including all words in the order in which they appear in the Australian mark. However, the following are not taken into account in determining whether a domain name exactly matches an Australian brand:
- Domain Name System (DNS) identifiers, such as “com.au”;
- punctuation marks, such as an exclamation point or apostrophe;
- items such as “a”, “the”, “and” or “of”; and
The Explanatory guide: administration rules for the .au domain – License (Explanatory guide) provides the following example to illustrate how this strict rule works in practice. If auDA relied on its registered Australian trade mark, being Australian trade mark number 1856158 for “”, To establish an Australian presence, he could only ask to register“ auauhqhomeofeverything.com.au ”.
The objective of this reform is to ensure that non-Australian entities which do not carry on business in Australia cannot register domain names unrelated to their Australian brands. Previously, the Australian presence requirement could be met if the registrant owned a registered Australian mark or was the applicant for an Australian mark without limitation of exact match. This meant that an offshore entity with an Australian trademark registration or a pending Australian trademark application, and which otherwise did not have an Australian connection, could register a domain name in the .com.au and. net.au if other eligibility and allocation rules for the second level domain (2LD) were satisfied. Under the old regime, an Australian trademark applicant or owner could register multiple domain names on the basis of a single trademark application under the close and substantial connection rule.
This rule change should be carefully considered by foreign entities wishing to register com.au and net.au domain names. It is important to note that entities should review and update their trademark portfolios to allow for the registration of larger variations of domains.