Updated Australian Domain Name Licence Rules
Imminent changes to domain name licencing rules may limit the ability of overseas businesses to secure and keep their Australian domain names.
In November 2020 we provided a brief update about the new proposed .au Domain Administration Rules (New auDA Rules), which will largely come into effect on 12 April 2021 (Date). Click here to view the New .au Domain Name Licensing Rules paper.
Importantly, all .com.au and .net.au domain names registered or renewed on or after the Date will be subject to the New auDA Rules (with varying implementation dates to follow other name spaces, including .au and .id.au). There is no proprietary ownership of a domain name, only licencing arrangements which allow use for a specified term (Licence). Relevant auDA Rules form part of the terms and conditions of every Licence. This includes any updated terms when they are introduced, such as the New auDA Rules.
In relation to the most used .au name spaces, com.au and .net.au, the main change being made relates to the ability of Licence holders to meet the Australian threshold test. Under previous auDA Rules, domain name Licences could only be allocated to “a registrant who is Australian” as defined under the relevant eligibility and allocation rules.
For .com.au and .net.au domain names, this meant that the Licence holder had to be an Australian registered company, or had some other direct connection with Australia, such as the holder of a registered trading name or foreign company licence.
In addition, a domain name Licence holder could also establish it was Australian by being the owner of an Australian registered trade mark or application. This could include a trade mark which was not the same as the domain name being sought, if the Licence holder could establish the domain name was otherwise closely and substantially connected (which was broadly interpreted) or for some monetisation purposes.
Australian Presence Test
The New auDA Rules introduce a new threshold eligibility Australian Presence test across all .au domain names (including .com.au and .net.au), which must be met, in addition to satisfying any other specific eligibility and allocation criteria relevant to the relevant domain name space.
The Australian Presence test can be satisfied in a variety of ways, including through the domain name Licence holder’s ownership of an Australian registered trade mark or application. However, under the new auDA Rules, if you are relying on an Australian trade mark as the sole basis to meet the Australian Presence requirement, then the domain name being sought must now be an exact match to the relevant Australian trade mark.
This means that the domain name must include all of the words in the same order in which they appear in the relevant Australian trade mark, except for the domain name system identifier (such as com.au or net.au); punctuation marks (such as an exclamation mark, apostrophe or ampersand); and words such as ‘a’, ‘the’, ‘and’, etc.
For example, under the New auDA Rules, if your relevant Australian pending or registered trade mark is for the words A BLUE DOVE TEACUP then:
|Your domain could be:||But not:|
It also means that the trade mark relied upon must be a word mark, and logo or device trade marks (even if they include the desired domain name) will no longer be sufficient.
Domain name Licence holders whose Licences are subject to the New auDA Rules after the Date, must also continue to have the required Australian Presence throughout the domain name Licence period. It is possible for a Licence to be cancelled if the requirement is no longer being met, for example if a foreign company relies on an Australian trade mark registration to meet this requirement and this trade mark ceases to be registered, or an application lapses without gaining registration.
Review your Australian Domain Name Portfolio
The New auDA Rules will apply to all domain names which are sought to be registered, transferred, or renewed on or after the Date. Until that time, the current Licence rules will continue to apply.
Current domain name Licences should be reviewed to check the basis upon which the Australian test has historically been satisfied and to consider if this will meet the requirements of the Australian Presence test under the New auDA Rules, if they are due to be renewed on or after the Date.
If an Australian trade mark registration or application has solely been relied upon previously, which will not meet the Australian Presence test after the Date, then consideration should be given to further appropriate trade mark protection being sought. Other alternative strategies could also include the transfer of domain name Licences to an eligible holder. This will need to be done before the Date however, to ensure transfers occur between eligible Licence holders, or they will otherwise be invalid.
If you are considering new Australian domain names you should also review now and consider whether domain names should be sought prior to the Date.
If domain name Licenses are granted prior to the Date (based on the current rules and eligibility criteria) the Australian Presence requirements will still need to be met in the future, but this may provide further time to structure Australian activities in order to more easily do so.
If a domain name Licence expires after the Date, the rules in place at the time the domain name was registered or last renewed will apply until the end of the current licence period. If the domain name is applied for or renewed on or after the Date, then the New auDA Rules will apply.
The New auDA Rules will also introduce a number of other changes, which Licence holders should familiarise themselves with, to ensure that the terms of domain name Licences are understood and complied with moving forward.
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This document is for general information only and cannot be relied upon as legal advice.