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Australian country-code domain names are in the form ‘www.mk.com.au’. These third-level domains may soon be outdated due to the release of the new second-level ‘.au’ domain, being the word/brand and the top level country code ‘.au’ e.g. ‘www.mk.au’.

As demand is expected to be high, a priority system has been adopted by the Australian Domain name Authority (auDA) for attaining second-level ‘.au’ domains. The priority system aims to –

1. streamline the registration process and ensure those entities with the strongest affiliation to the domain can attain registration of it; and
2. minimise the potential for cyber squatters to attain and/or profit from the registration of the domains where they have no real and effective connection with the domain in the course of business.

Applying for and determining a domain category

Obviously, the first step to get an .au domain is to apply for one. How successful an application for an .au domain will depend on the rules governing priority and in which category an existing third-level domain falls –

Category 1: A domain is deemed to be in this category if the relevant third-level domain name was first registered on or before 4 February 2018 and has been continuously registered since this date.

OR

Category 2: A domain is deemed to be in this category if the relevant third-level domain name that was first registered after 4 February 2018 and has been continuously registered since this date.

The release date and subsequent cut-off dates for when the applications close, have not been set.

Determining  priority and ranking

Category 1 domains will outrank Category 2 domains.

All Category 1 domains are given equal priority. However, Category 2 domains are ranked according to the date on which the domain was first registered (i.e. the earlier the registration date, the higher the ranking).

A domain name search can inform you of all identical third-level domains currently registered. This combined with some investigative work is likely to provide a good indication of whether there are any category 1 or category 2 domains registered. It will also assist in identifying where an applicant’s domain ranks.

Taking steps to attain the top ranking

Once a ranking has been determined, a strategy can be adopted to retain the top ranking; or improve it to no.1.

If there are multiple Category 1 domains, then auDA encourages parties to negotiate with the other registrants of the Category 1 domains to come to a commercial agreement as to who will own the second-level .au domain.

Alternatively, a more adversarial approach can be taken by launching domain name dispute actions to have the other category 1 domains cancelled or transferred to the party taking the action, thereby removing that domain from Category 1.

Both the above also apply to Category 2 domains. However, due to there being a definitive priority ranking amongst Category 2 applicants, a negotiation with a higher ranked applicant is likely to be more difficult than where there is equal priority (as per category 1). Therefore, it’s likely that domain name disputes will be more commonly used to climb category 2 rankings.

There are inherent risks and benefits associated with manoeuvring a ranking up the priority order irrespective of which method is adopted and a firm strategy should be implemented before taking action.

how to maintain a priority ranking

As an adversarial approach may be adopted by applicants, the following measures can be adopted to ensure a third-level domain isn’t vulnerable to cancellation or transfer:

1. Review auDA’s domain name rules to ensure eligibility requirements are met;
2. Ensure the word(s) comprising the domain name have an Australian trade mark registration;
3. Ensure the website to which the third-level domain relates is being used for legitimate business purposes; and
4. Ensure the third-level domain registration is renewed on time.

Adopting this strategy will ensure third-level domains remain registered and the priority ranking for attaining the second-level .au domain is retained.

take away points:

To maximise the prospects of securing a second-level .au domain parties should–

1. determine their priority ranking;
2. maintain their current priority ranking;
3. secure a trade mark registration for the domain name words; and
4. develop a strategy to get to the top.

This article first appeared on WTR Daily, part of World Trademark Review, in August 2020. For further information, please go to www.worldtrademarkreview.com.

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.