New auDA rules – Impact of changes to eligibility requirements for .au domain names

The .au Domain Administration (auDA) develops and administers the rules for domain names in the .au country code Top Level Domain (ccTLD). On 19 November 2020, auDA announced new rules for .com.au, .net.au, .org.au, .asn.au and .id.au namespaces, which will come into effect on 12 April 2021. In particular, certain rule changes will be implemented for .com.au and .net.au domain name licences which will limit the ability of foreign entities to rely solely on an Australian trade mark to meet the requirement that registrants be ‘Australian’.

Eligibility requirements for .com.au and .net.au domain names

A registrant of a domain name under the .au ccTLD must satisfy certain eligibility criteria, including being ‘Australian’ as defined in Schedule A and Schedule C (for .com.au) and Schedule E (for .net.au) of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs. Presently, a foreign entity being an applicant for, or an owner of, an Australian trade mark registration will satisfy this eligibility criterion for the purposes of registration of a .com.au or .net.au 2LD domain name. However, the domain name must be an exact match, abbreviation or acronym of the trade mark.

Based on the examples provided in Schedule B of the current Guidelines on the Interpretation of Policy Rules for Open 2LDs, all of the following domain names would satisfy the current eligibility criteria for the applicant or owner of an Australian trade mark for ‘Old-Fashioned Lemonade’.

Exact Match	Abbreviation	Acronym
oldfashionedlemonade.com.au	oldlemonade.com.au	ofl.com.au
oldfashioned.com.au	oldlemons.net.au
lemonade.net.au

Changes to the .com.au and .net.au domain name eligibility requirements

From 12 April 2021 .com.au and .net.au domain names that are registered or renewed will be subject to new eligibility requirements, including the requirement to have an ‘Australian presence’. The new ‘Australian presence’ requirement limits the ability of foreign entities to rely solely on an Australian trade mark application or registration to satisfy this eligibility requirement. If a foreign applicant elects to rely on an Australian trade mark application or registration to satisfy the ‘Australian presence’ requirement, the domain name must be identical to the words (in Roman or non-Roman characters) which are the subject of that application or registration, excluding any:

• Domain Name System identifiers, such as ‘.com.au’
• punctuation marks
• definite or indefinite articles (that is, ‘a’, ‘the’, ‘and’ or ‘of’)
  
• ampersands.

Further, the domain name must include all of the words in the order in which they appear, in the trade mark application or registration.

Accordingly, under these new rules, a foreign entity with no ‘Australian presence’ other than being the applicant or owner of an Australian trade mark for ‘Old-Fashioned Lemonade’ would only be eligible to register, or renew, the domain names oldfashionedlemonade.com.au and oldfashionedlemonade.net.au.

To be eligible to apply for, or renew, a domain name that is not an exact match of a trade mark, a foreign registrant will need to select another basis on which it meets the Australian presence requirement. Alternatively, the domain name may be transferred from a legal entity that will not meet this eligibility to one that will. However, any transfer should be made before 12 April 2021, as a transfer of a domain name can only occur between two entities that are eligible to hold it.

How will the changes to eligibility requirements for .au domain names affect you?

If applying for, or renewing, registration of a .com.au or .net.au domain name using an Australian trade mark as the basis for satisfying the ‘Australian Presence’ requirement, you may not be eligible (or no longer be eligible) to be the registrant of that domain name, after 12 April 2021.

If you have any queries about your eligibility to hold a .com.au or .net.au domain name, or for assistance in choosing, clearing, registering and renewing domain names and trade marks, please get in touch with Diana Bogunovic or Michael Seifried.