News & Insights

An effective online presence is a vital element of most businesses. This is particularly the case in a post-COVID-19 environment where more business has shifted online, particularly in the retail sector.

This makes it particularly important that businesses are aware of the rule changes for .au domain names that will come into effect on 12 April 2021.

Unlike top level domain names such as .com, the .au country code Top Level Domain (ccTLD) space is governed by strict rules, found in .auDA’s .au Domain Administration Rules: Licensing. Ensuring continued eligibility to hold existing domain names is vital for business continuity.

what domain names are affected?

The new rules will affect all .au ccTLDs that are registered, transferred or renewed on or after 12 April 2021. This means that while existing domain names will not be immediately affected, they will eventually all be affected.

foreign entities affected

To be eligible to hold a .com.au or .net.au ccTLD:

• the registering entity must have an Australian presence;
• the registering entity must be a “commercial entity”; and
• the domain name must bear a certain connection to that entity’s company name, business name, statutory name, personal name, trade mark or the goods, services, event or activity dealt with by that entity.

For foreign entities that are not incorporated in Australia or registered under the Corporations Act 2001 (Cth) as an Australian registrable body, the usual way to meet the Australian presence requirement is to be the owner of or applicant for a registered Australian trade mark.  The 2021 changes affect how the domain name must relate to that trade mark.

changes for domain names based on trade marks

Under the old rules, the domain name only needed to be “closely and substantially connected” to the trade mark.  From 12 April 2021, an exact match is required to the words in the trade mark.  The domain name must include all of the words that appear in the trade mark, in the same order.  The only elements that can be ignored are:

• domain name space (DNS) identifiers such as “com.au”;
• punctuation marks such as an exclamation mark or apostrophe;
• articles such as “a”, “the”, “and” or “of”; and
• ampersands.

auDA, the .au Domain Administration, gives a useful example.  If the trade mark is “A Pretty Horse Carousels”, the following are examples of eligible and ineligible domain names:

what is required?

Foreign entities with Australian domain names should check:

• whether their registration relies on a trade mark; and
• if so, whether that trade mark meets the new “exact match” requirements.

If not then they need to apply for a compliant Australian trade mark prior to their domain name’s next renewal date.

For any foreign companies, the Macpherson Kelley IP team can help to check the eligibility basis of a domain name, whether it complies with the new “exact match” requirements, and register a new trade mark if required.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.