Proposed Domain Name Licensing Changes

In order to register a .au domain name, there are a number of requirements that applicants must meet. Some of these rules are about to change.

In particular, the rules surrounding what constitutes an ‘Australian presence’ for the purposes of registering a domain name are set to change. On 17 June 2019, the .au Domain Administration (auDA), being Australia’s domain name policy-maker and regulatory body, published draft changes to the licensing rules of domain names. In particular, the changes which relate to the eligibility requirements for registering .au domain names are of particular importance.

Under the current rules, a foreign entity can register a .au domain name if it is the registered owner, or applicant, of an Australian trade mark that is referenced in the domain name. This is one of the primary ways in which a foreign company can register a .au domain name without having an office physically situated in Australia.

However, under the new rules, if using an Australian trade mark application or registration as the basis for a domain name application, the following conditions must be met:

  1. the trade mark registered (or applied for) must be or include a word mark; and
  2. the domain name applied for must be an exact match of that word mark.

The implications that this proposed change has on businesses based offshore and operating a .au website could be significant. If the overseas entity has its domain name registration based on an Australian trade mark application or registration for a logo, with no word mark element, or if the word mark element is not identical to the domain name, these proposed changes will render the basis for their .au domain name registrations potentially invalid.The proposed changes apply not only to those filing new .au domain names, but also to those businesses renewing their domain registrations (typically, Australian domain names must be renewed every 2 years). For foreign companies in this situation, it may be necessary to file an Australian trade mark application for a word mark (or a logo featuring a word mark element) which is identical to the relevant domain in order to fulfill the new eligibility requirements.

auDA are yet to announce the commencement date of the new rules, but we expect to hear regarding this in the near future. We will endeavour to keep you updated as further details come to light. Should you wish to discuss your .au domain name rights, or any trade mark rights pertaining to this development, please do not hesitate to email trademarks@actuateip.com.au for more information.