Australian Domain Changes – Act Now

Posted on by Fiona Trethewey

With the recent developments in the Australian domain name licensing space, businesses will soon have a greater choice of domain names. However, greater choice for some comes with greater restrictions on eligibility for others, in particular foreign businesses.

Registrants should obtain advice now to ensure they retain their entitlement to existing domain names and be proactive to ensure they don’t miss out on the opportunity to secure a ‘.au’ equivalent domain name.

Overview

As of 24 March 2022, ‘.au’ direct domain names (for example ‘vardons.au’) will be available to licence through auDA accredited registrars. It is anticipated that these new domain names will be very popular with businesses scrambling to secure a ‘.au’ equivalent domain name and to ensure that no third party registers a ‘.au’ direct domain name containing your brand as a cyber squatter or otherwise.

Unlike existing .au Domain Names that are subject to the strict allocation criteria, new .au direct domain names do not need to match the applicant’s name, trademark or a service, good, event, activity or premises provided by the applicant. Provided the Applicants meet the ‘Australian presence’ requirement  they are otherwise free to register any available .au direct domain name (with exceptions around prohibited names such as Olympic.au).

Registrants of domain names in an existing .au namespace (e.g. com.au, .net.au and org.au) will be able to apply for ‘priority status’ to register the exact match of their existing .au Domain Name as a new .au Direct Domain Name between 24 March 2022 and 24 September 2022. Importantly, at the time of applying for the matching .au Direct Domain Name, applicants must be eligible to hold the corresponding existing .au Domain Name.

If more than one owner of a pre-existing domain name applies for a priority hold on the ‘.au’ equivalent domain name, the allocation is determined as follows:

  • Applicants whose domain name was created on or before 4 February 2018 (Category 1 applicants) have priority over applications whose domain name was created after 4 February 2018 (Category 2 applicants);
  • among multiple Category 1 applicants, applicants must negotiate and agree on the allocation. If no agreement is reached, the .au Direct Domain Name remains unallocated; and
  • among multiple Category 2 applicants, the .au Direct Domain Name is allocated to the applicant with the earliest created existing .au Domain Name.

If no priority status is claimed by 24 September 2022 the .au Direct Domain Name becomes publicly available on a ‘first come, first served’ basis. As to disputes in respect of .au Direct Domain Names, parties will be able to file a dispute pursuant to the AUDRP or a complaint with AUDA under the .au Licensing Rules in the usual means. 

Further information about the new Australian name space can be found on the auDA website https://www.auda.org.au/blog/au-direct-ten-things-you-need-know-about-australias-newest-namespace.

Issues for Foreign Holders of .au Domains

As you are likely aware, the new eligibility rules for .au domain names came into force on 12 April 2021 to aim to ensure that the .au domain names are reserved for those with Australian businesses or genuine connections to Australia.

Foreign businesses will need to show they have an Australian presence to be able to renew an existing domain name, apply for a new traditional domain name such as .com.au or .net.au and also to be able to claim a priority hold for a .au direct domain name.

Also, under the new rules, the owner of a .com.au or .net.au domain name is prohibited from licensing, renting or leasing their domain name to a third party (other than a Related Body Corporate). If you are currently licensing a .com.au or .net.au to a third party, or using a .com.au or .net.au domain name under licence – there is a risk of cancellation.

Eligibility through Australian trademarks

One of the easiest ways for a foreign entity to establish that they satisfy the ‘Australian presence’ requirement is to hold an Australian trade mark registration or have a trade mark application pending for a mark which is an ‘exact match’ to the domain name sought after. ‘Exact match’ requires the domain name to be identical to the words contained in the Australian trade mark. The domain name must also include all the words, appearing in the same order, as the Australia trade mark application – excluding punctuation, ampersands and articles such as ‘a’, ‘the’, ‘and’, ‘or’ or ‘of’. For the sake of clarity, see below an example of a domain name that would be an ‘exact match’ to the Australian trademark THE NEXT GENERATION NATION:

  • thenextgenerationnation.com.au; and
  • nextgenerationnation.com.au.

Whilst an ineligible domain that would not be an ‘exact match’ would be:

  • next.com.au; and
  • nation.com.au.

Eligibility through Alternate Means

If an applicant does not hold an Australian trademark which is an ‘exact match’ for the .au Domain Name wanted, there are other ways for the applicant to satisfy the ‘Australian presence’ requirement. Including, but not limited to, an applicant who is a commercial entity could satisfy the requirement through:

  • a company registered under the Corporations Act 2001 (Cth);
  • an entity issued with an Australian Business Number; or
  • a partnership under the relevant Australian state or territory law.

If one of the above criteria are relied on, the applicant will be eligible to hold an .au Domain Name if the domain name sought is:

  • a ‘match’ for, or an acronym of, the company name, registered business name or their personal name (Applicant Name);
  • a ‘match’ of the person’s Australian trademark; or
  • a ‘match’ or synonym of the name of a service, good, event, activity or premises provided by the applicant.

For example, eligible domain names being a ‘match’ for an Applicant Name or Australian trademark for THE NEXT GENERATION NATION would be:

  • nation.com.au;
  • next.com.au.

An example of an ineligible domain name would be nationnext.com.au. 

Key takeaways

Following these recent changes, existing and potential .au Domain Name registrants should:

  • identify any ‘.au’ direct domain names that they wish to apply for a priority hold over;
  • check their eligibility to hold any existing .au Domain Names;
  • foreign businesses should consider filing trade mark applications in Australia for the exact match of any domain name they currently hold in Australia or plan to secure under the new .au direct domain name licensing regime.
  • apply for priority status for a correspondence .au direct domain name during the 24 March 2022 and 24 September 2022 Priority Allocation Period. After that time, members of the public will be able to register Direct Domain Names on a ‘first come, first served’ basis.