.au Domain Administration Limited (the administrator of .au domain names) is introducing a new set of rules for those who wish to hold, or continue to hold, a .au domain name.
The new rules will come into effect on 12 April 2021.
The new rules introduce several changes to the previous eligibility rules applying to .au domain names. One of these changes may have implications in particular for foreign persons or entities wishing to hold a .com.au or .net.au domain name.
Under the previous rules, a person or entity must be "Australian" (as defined by certain criteria set out in the rules) to be eligible to hold a .au domain name. This requirement would be satisfied for .com.au and .net.au domain names if the domain name was an "exact match, abbreviation or acronym" of a registered or pending Australian trade mark held by that person or entity.
Reliance on an Australian trade mark to satisfy the eligibility requirements under the previous rules has been a useful option for foreign persons or entities that cannot meet other available criteria satisfying the "Australian" requirement.
Under the new rules, a person or entity who wishes to rely on an Australian trade mark to support its eligibility to hold a .com.au or .net.au domain name can now only do so if the domain name is an exact match of its Australian trade mark. Essentially, the domain name must be "identical to the words which are the subject" of the Australian trade mark. This means that all the words that appear in the Australian trade mark must also appear in the domain name in the exact same order, with the exception of:
- "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
- "ampersands".
It will no longer be possible to rely on an Australian trade mark to support eligibility for a .com.au or .net.au domain name if the domain name is an abbreviation or acronym of the trade mark.
The rule changes may be significant for any person relying on their Australian trade mark to support eligibility to hold their .com.au or .net .au domain name. This is especially the case for foreign persons or entities that may have no other option available to support their .com.au or .net.au domain name registrations. Importantly, domain name rights could be lost if the domain name is not an exact match of their Australian trade mark.
Although the new rules come into effect on 12 April 2021, current domain name registrants will have until renewal of their existing domain name to ensure compliance with the new rules.
If you intend to rely solely on an Australian trade mark to support eligibility for a .com.au or .net.au domain registration, you should ensure that your Australian trade mark meets the new requirements. Similarly, if you already hold a .com.au or .net.au domain name and may be affected by the changes, you should consider seeking advice on whether your existing Australian trade marks satisfy the new rules or whether any steps need to be taken to ensure you are not at risk of losing your domain name registration before it is renewed.
Feel free to contact us if you need any advice about your domain name eligibility or Australian trade marks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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