New rules for the .au ccTLD come into effect on 12 April 2021.These include changes to licensing rules with eligibility criteria requiring an Australian presence. All relevant .au domain names registered or renewed on or after this date will be subject to the new licensing rules. The changes will not apply to the proposed .au namespace, the existing .id.au namespace and Internationalised Domain Names.
Of particular interest is the impact of the rule changes in the .com.au (and .net.au) namespace on foreign business entities.
A commercial entity is eligible to register a .com.au domain name. Although the definition of ‘commercial entity’ has been expanded, relevant entities are essentially those regulated under Australian law. Significantly, the definition of commercial entity includes a foreign legal entity or natural person who holds or has applied for an Australian Trade Mark. Further, the Australian presence requirement is met by a foreign entity relying on a registered trade mark or pending trade mark application that appears on IP Australia’s trade mark database. However, the domain name must be an exact match to the words which are the subject of the Australian Trade Mark application or registration. Exact match is defined as meaning that the domain name being applied for is identical to the words which are the subject of an Australian Trade Mark and the domain name must include all the words in the order in which they appear in the Australian Trade Mark, excluding:
- DNS identifiers such as com.au;
- punctuation marks such as an exclamation point or an apostrophe;
- articles such as ‘a’, ‘the’, ‘and ’or ‘of’; and
Previously, where an Australian Trade Mark application or registration was being relied upon for eligibility, the domain name could be ‘closely and substantially connected to’ the relevant Trade Mark.
Hence, those foreign businesses that relied upon the broader close and substantial connection test to register a .com.au or .net.au domain name will need to assess whether they remain eligible to hold that domain name and perhaps change the basis for eligibility before renewing it after 12 April 2021. For example, it may be necessary to apply to register an Australian Trade Mark which satisfies the narrower ‘exact match’ test, register as a foreign company under Australian law, or to transfer the domain name to an entity which meets the Australian presence requirement. Another option may be to renew the domain name before 12 April 2021 to buy further time to implement a compliant strategy. Failure to take steps to meet the Australian presence requirement may ultimately result in the domain name being invalid and being suspended or cancelled.
Conversely, Australian business entities will potentially be able to register a broader range of domain names.
Under 2.4.4 of the new licensing rules, a Person applying for a licence in the com.au and net.au namespaces must be
- a commercial entity; and
- the domain name applied for must be:
(a) a match of the Person’s company, business, statutory or Personal name; or
(b) an acronym of the Person’s company, business, statutory or Personal name; or
(c) a match of the Person’s Australian Trade Mark; or
(d) a match to or an acronym of a name of a related body corporate or
(e) a match or an acronym of a name of:
(i) a partnership of which the Person is a partner;
(ii) a trust of which the Person is a trustee; or
(f) a match or synonym of the name of:
(i) a service that the Person provides;
(ii) goods that the Person sells (whether retail or wholesale);
(iii) an event that the Person registers or sponsors;
(iv) an activity that the Person facilitates, teaches or trains;
(v) premises which the Person operates
and which that Person is providing at the time of the application.
Under the new licensing rules, Australian companies within a corporate group may also apply for and hold relevant .au domain name licences on behalf of a related body corporate where that related body corporate has an Australian presence. A related body corporate is defined by reference to s50 of the Corporations Act (Cth).
Significantly, under 2.2.3, a Person must not use a privacy or proxy service to hide the identity of the licence holder.
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