Will Your Australian Domain Name Survive? – by Jenny Mackie
On 12 April 2021 the rules regarding being entitled to hold .com.au and .net.au domain names will change. These rules will affect new domain names that are registered after this date and existing domain names when they are renewed after this date.
It has always been a requirement that to hold .com.au and .net.au domains that the owner has an Australian presence. Foreign domain owners have been able to meet this requirement by having an Australian trade mark application or registration. However, the current rules allowed domain names to be registered which were “closely and substantially connected” to the trade mark. The new rules require that the domain name be an exact match to the trade mark.
Practically what is the difference?
If the trade mark registered by the foreign entity was Brisbane Olympics 2032.
Current rules would allow domains such as
The new rules will only allow domains such as
The new rules require:
“… that the domain name being applied for is identical to the words which are the subject of an Australian Trade Mark. The domain name must include all the words in the order in which they appear in the Australian Trade Mark, excluding:
1. DNS identifiers such as com.au;
2. punctuation marks such as an exclamation point or an apostrophe;
3. articles such as ‘a’, ‘the’, ‘and ’or ‘of’; and
More information about this change is available here.
Accordingly foreign holders of existing .com.au and .net.au domain names need to take action now to ensure that they will be able to meet the new eligibility requirements when their domain name is due to be renewed or risk losing the entitlement to hold the domain. As a new domain license is created at the time of renewal the filing of a new trade mark application which is identical to the current domain name prior to the domain renewal would satisfy the criteria.