Home Insights Australian domain name rule change for trade mark owners

Australian domain name rule change for trade mark owners

Read time
2  minute read
Date published
18 February 2021

From 12 April 2021, new rules governing the eligibility of registering .au domain names come into effect. The primary changes affect domain name holders who rely on an Australian trade mark as the basis of their eligibility to hold an .au domain name. 

Key aspects of the new rules and how they may apply to your brand, are outlined below. 

Relying on trade marks to meet “Australian presence” requirements

To register an .au domain name, it is necessary to have an “Australian presence”, which can be satisfied by meeting various criteria including:

  • being an Australian company;
  • trading under a registered business name;
  • owning an Australian trade mark registration or an application for a trade mark which has a “close and substantial” connection to the domain name. Reliance on an Australian trade mark registration or application is particularly common for overseas rights holders using .au domain names. 

The new rules governing .au domain name eligibility require domain names be an “exact match” to the holder’s trade mark. The domain name must include all the words which comprise your trade mark, in the order they appear in your trade mark. However, not all trade mark elements have to be included in the domain name, specifically:

  • Domain Name System (DNS) identifiers such as com.au;
  • punctuation marks, such as exclamation points or apostrophes;
  • articles such as “a”, “and” or “the”;
  • ampersands.

As an example of how strict the new “exact match” requirements are, a party holding the trade mark registration for GRIFFITH HACK could rely on the trade mark registration as a basis for registering the domain name griffithhack.com.au, but not as a basis for registering domain names such as griffithhacklaw.com.au or gh.com.au.

One further rule change of specific interest to overseas rights holders relying on an Australian trade mark registration or application as a basis for holding a .au domain name, is that companies can now hold .au domain names on behalf of another company in their corporate group, as long as they meet the Australian presence requirement.

When the new eligibility rules come into effect on 12 April 2021, they will apply to all .au domain names registered or renewed after this date.  We recommend that .au domain name holders review their .au domain names to ensure they will meet the new eligibility requirements. It may be necessary to take actions such as filing new trade mark applications that are “exact matches” for your .au domain names or transferring your .au domain names to your Australian businesses or subsidiaries to ensure your .au domain names remain valid.