New domain name Licensing Rules to come into effect in Australia from 12 April 2021

From 12 April 2021, auDA (the .au Domain Administrator) will introduce and enforce a new uniform domain name licensing scheme in Australia.

The .au Domain Administration Rules – Licensing (the Licensing Rules) will update and consolidate over 20 auDA published policies on registrant obligations, as well as the auDA domain names complaints process, into a single document.

What is changing?

The most notable changes include:

• the requirement for foreign entities relying on an Australian trade mark to meet the Australian Presence requirement for a .au domain name registration to ensure the domain name is an exact match to the underlying registered trade mark;
• the ability for entities to apply for and hold .au domain names for related bodies corporate in a corporate group, provided the related body corporate meets the Australian Presence requirement;
• a prohibition on .au domain name holders sub-leasing, renting or otherwise allowing third parties that are not related bodies corporate with an Australian Presence to use a domain name licence;
• the requirement to be a not-for-profit entity registered with the Australian Charities and the Non for Profit Commission to register a .org.au domain name – unincorporated associations will no longer qualify;
• the requirement to change the domain name authorisation code after transfer; and
• Registrars must now provide two days to restore a cancelled domain name.

Australian trade marks and domain names

In Australia, entities registering a .au domain must demonstrate they have a connection with Australia (referred to as the Australian Presence requirement in the new Licensing Rules).  While Australian entities typically prove this by providing an ACN during domain name registration, foreign entities often rely on an Australian trade mark application as the sole basis to fulfil the Australian Presence requirement for registering the .au domain name.

Former auDA licensing rules allowed such .au domain names to be ‘closely and substantially connected’ to the words of the underlying Australian registered trade mark.  The new Licensing Rules, however, require that the .au domain name is an ‘exact match’ to the underlying Australian trade mark.  This excludes:

• Domain Name System (DNS) identifiers such as com.au;
• punctuation marks such as an exclamation point or an apostrophe; and
• articles such as ‘a’, ‘the’, ‘and’, ‘of’ or ‘&’.

For example, an entity who meets the Australian Presence test by relying on an Australian registered trade mark over the words ‘The Orange Tree Coffee Cart’ can register the following domain names:

• orangetreecoffeecart.com.au; or
• theorangetreecoffeecart.net.au.

The entity cannot register a domain name over, for example:

• orangetree.com.au; or
• orangetree.net.au.

Foreign entities with no Australian presence whose domain names are not an exact match to their underlying Australian registered trade mark will need to update their information before the end of the current domain name licence period.  This could include:

• transferring captured domain names to an Australian company such as an Australian subsidiary;
• registering as a foreign corporation trading in Australian and obtaining an Australian Registered Business Number (ARBN); or
• applying for additional Australian trade marks that are an exact match to the domain name.

The new Licensing Rules will apply to all domain names created, transferred or renewed on or after 12 April 2021.

For more information about pending updates to the auDA Licensing Rules, or to seek assistance with domain name transfer, company registration or top-up trade mark protection, please contact our Digital & Intellectual Property team.

Special thanks to Lornagh Lomax, Lawyer for her assistance in putting this article together.

This publication covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. It is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.