Wednesday 27 January 2021

Rules for owning Australian domain names are changing

The rules for owning Australian domain names are changing from 12 April 2021. This will affect businesses who currently own .com.au or .net.au domain names, and those who want to register them.

Right now, you can own .com.au or .net.au domain names only if you:

  • are a relevant Australian business, or
  • satisfy other criteria such as having a relevant trade mark.

If you’re a relevant Australian business, you don’t need to worry too much. For you, the rules are not dramatically changing.

However, if you rely on a trade mark to own one of the above domain names, things may have just gotten a lot more complicated for you. Previously, the trade mark you relied upon had to merely be ’an exact match, abbreviation or acronym of the trade mark‘. From 12 April 2021, it must be an ’exact match’.

As an example, under the old rules, a trade mark for AJ PARK would allow you to register any of the following domain names:

  • ajpark.com.au (exact match)
  • ajparklaw.com.au (abbreviation)
  • ajp.com.au (acronym).

Under the new rules , only the first example (ajpark.com.au) can be registered based on the trade mark AJ Park—meaning the second and third examples are invalid and would not be registrable or would lapse if already registered.

While the phrase ’exact match’ seems straight forward, it is slightly broader than you would expect. There are a few differences that may be allowed, but not many.  ’Exact match‘ is defined in the new rules as follows:

“The domain name being applied for 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 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 ampersands.”

If you own .com.au or .net.au domain names, you need to urgently consider:

  1. whether you meet the new rules, and
  2. what strategy is best for you to keep your domain names.

Some options to consider include:

  • filing a new trade mark that is an ‘exact match‘ for the domain name,
  • registering yourself as an Australian business,
  • transferring the domain name to an Australian business you control,
  • renewing your domain name early to buy yourself more time (the new rules will trigger a review of existing domain name validity only when you renew or transfer the domain), or
  • changing the domain name you use (ie, do not use .com.au or .net.au).

The new rules come into effect on 12 April 2021, so you have a short window to take action.

We are happy to help. Just get in touch.