.AU Domain Names Must Have A Presence In Australia

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[co-author: Brighid Virtue, Law Graduate at Kalus Kenny Intelex]

Foreign entities looking to register Australian domain names need to be aware that the eligibility requirements have changed and the threshold is now much higher. If a foreign entity is relying on a registered Australia trademark to meet the Australia presence requirement, they must ensure that their domain is an exact match to that trademark.

On 12 April 2021, a new set of rules relating to the licensing of the .au country code Top Level Domain (ccTLD) came into effect in Australia.

These new licensing rules amalgamate and update more than 30 policies previously published by.au Domain Administration Limited (“auDA”), the .au domain administrator and policy body. Importantly, the new licensing rules impose stricter requirements on foreign entities applying to register .au domains.

The History of the .au ccTLD

In 1986 the Internet Assigned Numbers Authority (the standards organisation that oversees global IP address allocation and root zone management in the domain name system) delegated the administration of the .au domain to a computer programmer at the University of Melbourne named Kevin Robert Elz. Throughout his time as administrator, Elz developed important eligibility requirements for registering Australian domains and is now credited as preventing a “domain name gold rush” from occurring in Australia, as it did in many other countries around the globe.

Following the significant growth of the internet throughout the 1990s, and a consequent increase in the demand for Australian domains, the administration of the .au ccTLD was passed through a number of different hands before landing with auDA in 1997.

Since then, both the Australian Government and the International Corporation for Assigned Names and Numbers (“ICANN”) have formally endorsed auDA as the policy authority and industry self-regulatory body responsible for supervising, licensing and accrediting participants in the Australian domain name registration system.

The Old .au Licensing Rules

Under auDA’s licensing rules, foreign entities are eligible to license a .com.au domain provided that they can establish that they have a presence in Australia. That is, provided that the foreign entity is:

  • trading under a registered business name in an Australian State or Territory;
  • licensed to trade in Australia; or
  • the registered owner of an Australian trademark or has applied to register an Australian trademark.

Under the old auDA licensing rules, where foreign entities sought to rely on a registered or pending Australian trademark, they were required to show that that trademark was either:

  • an exact match, abbreviation or acronym of the relevant .au domain; or
  • otherwise closely and substantially connected to the .au domain.

Historically, foreign entities have favoured using an Australian trademark to meet the Australian presence requirement because the term “closely and substantially connected” has been interpreted broadly. This meant that foreign entities could register .au domain names that were not an exact match of their trademark.

In 2017 however, auDA established a policy review panel, which was tasked with examining and making recommendations on the consolidation and reform of the auDA’s published policies. After more than two years of review and public consultation, auDA’s Board approved the policy review panel’s recommendation to implement new licensing rules.

The New .au Licensing Rules

As a result of the new licensing rules which came into effect this month, the threshold for foreign entities to meet the Australian presence requirement is now much higher.

Under the new rules, if a foreign entity seeks to rely on an Australian trademark registration or application to meet the Australian presence requirement, then the domain that they are seeking to license must be an exact match to the Australian trademark.

The new licensing rules define an ‘exact match’ as meaning a domain name that “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 Trademark, 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
  • ampersands.”

Notably, the new licensing rules apply to all applications to license or renew a domain name licence that is made on or after 12 April 2021. So, foreign entities with a .au domain may need to consider applying for a new Australian trademark which is an exact match to their domain, to ensure that they continue to meet the Australian presence requirement.

To access the new licensing rules visit https://www.auda.org.au/policy/au-domain-administration-rules-licensing.

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