New Licensing Rules now apply to registration of Australian Domain Names, including.com.au and.net.au.

Specifically, the New Rules apply to all Australian domain names registered or renewed after 12 April 2021. If your Australian Domain Name does not satisfy the New Rules (once effective for your domain name), it may be suspended or cancelled.

In short, foreign entities who own Australian Domain Names and do not have an Australian Registered Body Number (ARBN) must now have an Australian trade mark application or registration in place which is essentially an exact match to the words in that domain name. Otherwise, that domain name may be suspended or cancelled.

For Australian based entities, the ability to hold domain names has opened up and expanding your domain name portfolio to maximise traffic to your website is an option for you.

Owners of Australian Domain Names registered before 12 April 2021 can use the time they have before the domain name is due for renewal to assess whether their domain name satisfies the New Rules and, if they do not, adopt an appropriate strategy to ensure the domain name will satisfy the New Rules at renewal.

Foreign Owners Beware

The New Rules retain the threshold requirement for Australian Domain Name Owners to have an Australian Presence but how Foreign entities can satisfy this requirement is now limited.

Do you have an Australian Trade Mark Application/Registration?

Unless a non-Australian domain name owner has an ARBN, it must rely on an Australian trade mark application or registration to establish the Australian Presence requirement and the Domain Name must be an exact match to the words which are the subject matter of the Australian trade mark (excluding the domain name extension, punctuation and a, the, and, or, of and &).

It will not be sufficient if the foreign owner’s domain name abbreviates, is an acronym for, or contains one word from, its Australian trade mark.

Example:

Australian Owners Consider New Registrations

Australian business, company, government and organisation Owners will readily satisfy the Australian Presence requirement. However, Australian entities should still check that their domain name meets the Allocation rules and also consider registering a broader range of domain names as the Allocation rules have become easier to satisfy.

Are you Maximizing your Domain Name Portfolio?

Domain names can be registered to redirect back to a main domain name website, thereby capturing more internet traffic to a business.

For.com.au and.net.au domain names for example, the New Rules permit registration of domain names that match or are an acronym of the domain name Owner’s trade mark, company, business, statutory, personal name or the name of its related body corporate, partnership or trust (of which it is a trustee) or match or are a synonym of a service, product, event, activity, premises an owner provides/operates.

Example:

What to do Now?

Foreign Entities:

Obtain a list of your Australian domain names and check:

  1. Are the Owners of your Australian domain names an Australian affiliate subsidiary company or foreign entity registered in Australia (with an ARBN)? YES? No further action is required, provided the domain names meet the allocation rules – for com.au and.net.au domain names these include that they match or are an acronym of the domain name Owner’s trade mark, company, business, statutory, personal name or the name of its related body corporate, partnership or trust (of which it is a trustee) or match or are a synonym of a service, product, event, activity, premises an owner provides/operates. Complications may arise where the Australian.com.au or.net.au domain name is owned by the Australian affiliate subsidiary company but the foreign entity owns the registered Australian trade mark. You may need to check if the Australian affiliate subsidiary can satisfy the Allocation rules on the basis the domain name is a match or are a synonym of a service, product, event, activity, premises an owner provides/operates, rather than on the basis the domain name is a match or are an acronym of the domain name Owner’s trade mark, as the domain name owner and trade mark owner are different in this scenario and the latter criteria would not apply.
  2. If your Australian domain names are owned by non-Australian entities which do not have an ARBN, do you have an Australian trade mark that exactly matches the word element/s (excluding the domain name extension, punctuation and a, the, and, or, of and &) of the domain name? YES? No further action is required. NO? If you wish to keep the domain name, then please consider:
  3. Registering an Australian trade mark to satisfy the New Rules; OR
  4. Transferring ownership of your Australian domain names to an Australian affiliate subsidiary company and consider entering an Agreement with that subsidiary regarding its ownership of the domain name. Both the transferor and transferee must be eligible to hold the domain name at the date of transfer. However, if the domain name was registered before 12 April 2021, the transferor need only satisfy eligibility under the Old Rules (that applied before 12 April 2021), whilst the transferee will be assess for eligibility and allocation under the New Rules; OR
  5. Register your foreign entity in Australia. As the Old Rules will apply to a domain name registered before 12 April 2021 until that domain name is renewed (or transferred), unless your domain name is immediately due for renewal, you do have time to develop a strategy, that is, up until the next renewal deadline.

Australia Owners

Obtain a list of your Australian domain names and check:

  1. Does the domain name meet the Allocation rules? For com.au and.net.au domain names these include that they match or are an acronym of the domain name Owner’s trade mark, company, business, statutory, personal name or the name of its related body corporate, partnership or trust (of which it is a trustee) or match or are a synonym of a service, product, event, activity, premises an owner provides/operates.
  2. Can you leverage off your trade mark/business/company name and register more domain names?
  3. Can you expand your domain name portfolio to register terms associated with your business?

Businesses should take action now and consider the most appropriate strategy for their circumstances, including registering any trade marks or domain names required.