On 12 April 2021, a new set of rules came into effect, introducing changes for .com.au and .net.au domain names. The new rules apply to all .com.au and .net.au domain names that are registered or renewed on or after this date. In short, if you rely on an Australian trade mark as the basis for satisfying the Australian presence eligibility requirement to hold a .com.au or .net.au domain name, the domain name must be an exact match of the Australian trade mark. Otherwise, you risk having your domain name suspended or cancelled. This new rule is particularly important for foreign persons or entities who often rely on this option to meet the Australian presence requirement. This article discusses some of the key aspects of the new eligibility rules and how these changes may affect you.

Previous Eligibility Rules

To be eligible to hold a .au domain name, you need to first demonstrate that you are 'Australian' as defined in the rules, also known as the Australian presence requirement. One of the ways in which you can meet the Australian presence requirement is by owning a registered or pending Australian trade mark. Under the previous eligibility rules, you would be eligible to hold a .au domain name that was:

  • an exact match, abbreviation or acronym of the trade mark; or
  • otherwise closely and substantially connected to the owner.

Relying on an Australian trade mark under the previous rules was particularly common for foreign persons or entities that could not meet other eligibility criteria to satisfy the Australian presence requirement.

New Eligibility Rules From 12 April 2021

Under the new rules, if you are using a registered or pending Australian trade mark to support your eligibility to hold a .au domain name, the domain name must be an exact match of the trade mark. An exact match means that the domain name is identical to the words which are the subject of the Australian trade mark and in the same order, aside from:

  • DNS (Domain Name System) identifiers, such as com.au or .net.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 sufficient if the domain name is an abbreviation or acronym of the trade mark, or is 'closely and substantially connected' to the trade mark.

The table below provides examples of when a com.au domain name may or may not satisfy this new rule.

Australian trade mark Domain name Is the domain name eligible?
LEGALVISION
legalvision.com.au Yes: the domain name is an exact match to the words in the trade mark.
lv.com.au No: the domain name is not an exact match of the trade mark.
visionlegal.com.au No: the domain name is not in the same order as it appears in the trade mark.

Who Is Impacted by the New com.au Eligibility Rules?

These new rules affect you if you:

  • rely on an Australian trade mark as the basis for meeting the Australian presence requirement; and
  • hold a .com.au or .net.au domain name that is not an exact match of the Australian trade mark, as explained above.

In other words, if you are looking to register or renew a .au domain name using an Australian trade mark to satisfy the Australian presence requirement, the domain name must be an exact match of the Australian trade mark for you to be eligible (or remain eligible) to hold that domain name, after 12 April 2021.

The rule changes are particularly significant for overseas persons or entities who are unable to meet any of the other eligibility criteria to support their com.au domain names.

What Can Holders of Affected .au Domain Names Do?

To ensure you are eligible or remain eligible for your .com.au or .net.au domain name, you should consider either:

  • registering an Australian trade mark that exactly matches the words contained within your current or proposed domain name; or
  • changing the basis on which you meet the Australian presence requirement.

For example, you may wish to consider transferring ownership of your .au domain names to a new entity (e.g. an Australian subsidiary) that is eligible.

Key Takeaways

From 12 April 2021, if you are applying for or renewing a .com.au or .net.au domain name relying on an Australian trade mark to meet the Australian presence requirement, you must ensure that the domain name is an exact match of the trade mark. For current .com.au and .net.au domain name holders, we recommend:

  • reviewing all of your .com.au and .net.au domain names and seeking advice on whether these satisfy the new eligibility rules; and
  • considering what steps you may need to take to ensure they remain valid.