What actions should brand owners take to comply with the new ‘.au’ licensing rules?

Apr 23, 2021, 07:35 AM

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This article was first published in the World Trademark Review magazine on 22 April 2021.

The ‘.au’ registry (auDA) has implemented new rules about the registration of ‘.au’ domain names, which came into force on 12 April 2021.

The rules apply to any new ‘.au’ domain name registration and ‘.au’ existing domain names that must be renewed. If a registrant does not comply with the new rules, auDA may delete the domain name.

The changes in licensing rules mainly concern ‘.com.au’ and ‘.net.au’ domains – the extensions most commonly used by corporations and brand owners.

To secure a ‘.com.au’ or ‘.net.au’ domain name, applicants must satisfy Australia’s local presence requirements. There are 17 ways to fulfil these. The most common are for applicants to prove that they are:

• an Australian citizen or an Australian permanent resident visa holder;
• a registered company under the Corporations Act 2001;
• a registrable Australian body or foreign company with an Australian registered body number;
• an incorporated association or registered organisation (eg, a union); or the applicant or owner of an Australian trademark.

Exact-match trademark wanted

Previously, applicants or owners of an Australian trademark could satisfy that eligibility requirement if their Australian mark was closely and substantially connected to the domain name that they wished to register. Stricter restrictions now apply.

Under the new rules, if a brand owner relies on its registered Australian trademark to register or maintain its ‘.com.au’ domain, the domain must correspond to the name of the trademark exactly. However, this excludes punctuation marks and articles such as ‘a’, ‘the’, ‘of’ or ampersands (eg, ‘fruitloom.com.au’ would be accepted for the owner of FRUIT OF THE LOOM).

Brand owners that already own a ‘.au’ domain name must also ensure that they still comply with the rules. If they are now found to be in breach of the rules, two main options are available. The first is to change their proof of eligibility – their basis of claim to satisfy the local presence requirement need not be a registered or pending Australian trademark.

The second option is to register a trademark that is identical to a domain name in Australia. The second option is to register the exact trademark as a domain name in Australia. The good news is that auDA recognises pending trademark applications as sufficient to satisfy the presence requirement. However, if the trademark is later refused, the domain name is highly likely to be considered non-compliant with the registration rules. Therefore, the applicant must find another way to satisfy the rules quickly in order to avoid losing the domain name.

Another way to remain eligible would be to transfer the domain name to a new entity that meets the Australian requirements.

With regard to ‘.org.au’ domain name changes, associations that are not registered are no longer eligible unless they are listed in the official Australian Charities and Not for Profit Commission registry.

These changes are relevant for brand owners that rely on an Australian trademark to fulfil the eligibility conditions. If a brand owner has used an Australian business number (ABN) or company number (ACN) as its proof of eligibility, it will not be affected by the changes. However, the ABN or ACN must still be valid; otherwise, any party could raise a complaint with auDA. If the owner fails to show an up-to-date ABN or ACN on investigation, the domain name will be deleted after 14 days of being notified of the breach.

No more exceptions for monetisation

Another significant change in the licensing rules includes the monetisation of ‘.au’ domain names. Domain monetisation is allowed for ‘.com.au’ and ‘.net.au’ extensions only.

Under the previous rules, an exception was made where registrants could register domain names for monetisation if the name, brand or entity used in the domain name did not already exist and the content fulfilled specific requirements.

This exception has now been removed. Under the new eligibility rules, auDA is confident that if the eligibility and allocation rules are met, then registrants are entitled to monetise their domains if they wish.

Finally, the renting, leasing and sub-licensing of domain names remains prohibited across all namespaces in the ‘.au’ domain. The only exception is the related body corporate rule, whereby a person can hold a licence on behalf of – and for use by – a related body corporate.

Comment

The new ‘.au’ licensing rules aim to ensure that the namespace remains a trusted, Australian jurisdiction. Although the new rules may hinder cybersquatters from infringing on brands in the ‘.au’ space, they also make it more difficult for foreign companies to secure a ‘.au’ domain name if they do not yet operate in Australia.

If a domain name no longer meets the eligibility requirements, the owner will not be able to renew it at the time of expiration unless it updates it. For new domain registrations and upcoming renewals, brand owners that do not have a local Australian entity or an Australian trademark that matches the domain name exactly should:

• apply for a new trademark that matches the new domain name exactly;
• register a local business in Australia; or
• move their website to a new domain name that meets the presence requirements.