Australia’s .au Domain Administration (auDA) organisation has given notice that .au domains will be subject to a raft of stricter rules when they are registered or next renewed from 12th April 2021.
Domain names are not owned, but rather are licenced, with the terms of the licence primarily set by the register for the top-level domain – in the case of the .au top-level domain auDA. Consequently, auDA can change the rules according to which a domain name is licensed. Some of the rule changes will apply to all .au domains, while other changes will only apply to specific second-level domains, such as .com.au. Several of the rule changes are noteworthy from an intellectual property perspective.
Currently registrants for all .au domains need to satisfy an Australian presence test. For .com.au and .net.au domains in the name of registrants that are not domiciled or registered in Australia auDA allows the Australian presence requirement to be satisfied if the registrant also has an Australian trade mark registration or pending application that is closely and substantially connected to the domain name.
However, the Australian presence test for .com.au and .net.au domains registered or renewed on or after 12th April 2021 will be satisfied only if the domain name only contains the exact trade mark or specific minor variations thereof. In particular, the domain name must include and only include all the words in the order in which they appear in the Australian trade mark, 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
Non-Australian business entities that will no longer satisfy the Australian presence test under the stricter test have some options for avoiding losing the right to use a domain name. Most notably, they could:
- apply for a trade mark that will exactly match the domain name in question taking into account the above exclusions; or
- have the domain name transferred and held on behalf of the current registrant by another company in their corporate group (a ‘related body corporate’), as long as that related company meets the Australian presence requirement. i.e. this could involve registering an Australian entity.
This latter option becomes available under the new rules from 12th April 2021, provided that the holding of the domain name on behalf by a related body corporate does not create a conflict of interest. The new rules also expand the types of commercial entities that can qualify for a .com.au or .net.au domain name. In particular, from 12th April 2021 the definition of ‘commercial entity’ will include incorporated limited partnerships under State or Territory legislation, Commonwealth entities, statutory bodies under commonwealth state or territory legislation, trading co-operatives and the government being the crown.
Also from 12th April 2021 registrants will no longer be able to sell, rent or lease sub-domains of a domain name, unless it is to a related body corporate. Sub-domains have the format www.subdomain.example.com.au. auDA is restricting the use of sub-domains as otherwise domain name holders can operate a private registry allowing third parties who would otherwise not be entitled to use an Australian domain name to do so.
Further, domains will only be able to be held by a person or entity that has contractual capacity. As a result of this a domain registered in the name of a company that gets de-registered or a person who dies will be cancelled 30-days from the date that contractual capacity is lost. Once the domain name licence is deemed cancelled it cannot be transferred or renewed.