New auDA Licensing Rules raise the bar for foreign domain name holders relying on trade mark

Dentons
Contact

Dentons

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.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Dentons | Attorney Advertising

Written by:

Dentons
Contact
more
less

Dentons on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.