Are you a foreign entity with an Australian domain name registration (e.g. .com.au or .net.au)?
The new auDA Licensing Rules that came into effect on 12 April 2021 have raised the bar for foreign entities that rely on an Australian trade mark registration as the sole basis to demonstrate the requisite ‘Australian presence’.
Any such domain name licences applied for, renewed, or transferred after 12 April 2021 will need to be an ‘exact match’ of the words of the corresponding trade mark registration (including pending applications), with the exception of punctuation marks, articles such as ‘a’, ‘the’, ‘and’ or ‘of’, and ampersands (‘&’).
This is a shift from the previous eligibility rules, under which a domain name could merely be “closely or substantially connected” to the words of the corresponding trade mark – which allowed for abbreviations and acronyms.
The new rules also provide that an Australian company in a corporate group may apply for and hold a .com.au or .net.au domain name licence on behalf of a related body corporate, provided the related company also meets the Australian presence requirements.
As the transfer or renewal of an existing .au domain name will need to meet the updated requirements, the new rules should especially be borne in mind when:
- undertaking due diligence searches for an asset sale; or
- attending to the renewal of a .au domain name;
as the ability to licence the domain name ownership will be impacted if it does not correspond to an identical Australian trade mark registration.