The Australian administrator for the .au country code top level domain, .au Domain Administration Limited (auDA), has introduced the .au Domain Administration Rules: Licensing (Rules). The Rules consolidate and update more than 30 auDA Published Policies dealing with registrant obligations and the complaints process into a single uniform licensing scheme. 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. The CEO of auDA, Rosemary Sinclair AM, stated that the introduction of the Rules “signifies an important step forward in .au governance – modernising the policy framework, ensuring the .au domain can respond to the changing needs of Internet users, and continuing to build trust and confidence in .au namespaces”.
The Rules have introduced key changes to, among other things:
- eligibility and allocation rules for some namespaces in the .au domain;
- terms and conditions for .au domain names, such as the rules regarding sub-domains, third party use, and monetisation;
- the complaints and cancellations processes; and
- the process by which auDA manages compliance with the licensing rules.
The scope of the reform is extensive. In this article, we focus on the new rule relating to registration of an Australian trade mark to establish an Australian presence when applying for a licence in the com.au and net.au namespaces.
With limited exceptions, the Rules came into effect on 12 April 2021.
Relying on an Australian trade mark to establish an Australian presence when applying for a licence in the com.au and net.au namespaces
The threshold requirement for holding a licence in any namespace in the .au domain is an Australian presence. An Australian presence can be established by, among other things, 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 foreign domiciled persons and corporations this can raise regulatory and tax considerations. An Australian presence can also be established by being the applicant or owner of an Australian trade mark that appears on IP Australia’s trade mark database.
Under paragraph 2.4.5 of the Rules, a person who relies on an Australian trade mark to establish an Australian presence when applying for a licence under the com.au and net.au namespaces will only be permitted to register a domain name that is an exact match to the words which are the subject matter of the Australian trade mark. As a result of the definition of “exact match” in paragraph 1.4 of the Rules, the domain name being applied for must be identical to the Australian trade mark, including all words in the order in which they appear in the Australian trade mark. However, the following are not included when considering whether a domain name is an exact match of an Australian trade mark:
- Domain Name System (DNS) identifiers, such as “com.au”;
- punctuation marks, such as an exclamation point or an apostrophe;
- articles such as “a”, “the”, “and” or “of”; and
The Explanatory Guide: .au Domain Administration Rules – Licensing (Explanatory Guide) provides the following example to illustrate how this stringent rule operates in practice. If auDA relied on its registered Australian trade mark, being Australian trade mark number 1856158 for “”, to establish an Australian presence, it could only apply to register “auauhqhomeofeverything.com.au”.
The purpose of this reform is to ensure that non-Australian entities who are not otherwise conducting business in Australia cannot register domain names that are unrelated to their Australian trade marks. Previously, the Australian presence requirement could be satisfied if the registrant owned an Australian registered trade mark or was the applicant for an Australian trade mark without the exact match limitation. This meant that an offshore entity holding an Australian trade mark registration or a pending Australian trade mark application, and who did not otherwise have an Australian connection, could register a domain name in the .com.au and .net.au namespaces if other eligibility and allocation rules for the second level domain (2LD) were satisfied. Under the old regime, the applicant for, or owner of, an Australian trade mark could register multiple domain names on the basis of a single trade mark application under the close and substantial connection rule.
This change in the Rules needs to be carefully considered by overseas entities wishing to register com.au and net.au domain names. Importantly, entities should review and update their trade mark portfolios to permit broader variations of domains to be registered.