Changes to the Australian Domain Name Rule for Trademark Owners

From April 12, 2021, new rules governing the eligibility of .au domain name registrations come into effect. The main changes affect registrants who rely on an Australian trademark as the basis of their eligibility to hold a .au domain name.

The main aspects of the new rules and how they may apply to your brand are described below.

Leveraging brands to meet ‘Australian presence’ requirements

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

  • be an Australian company;
  • trade under a registered trade name;
  • be the owner of an Australian trademark registration or trademark application which has a “close and substantial” connection with the domain name. The use of an Australian trademark registration or application is particularly common for foreign rights holders using .au domain names.

New rules governing .au domain name eligibility require domain names to be an “exact match” to the registrant’s brand. The domain name should include all of the words that make up your brand, in the order they appear in your brand. However, not all brand elements need to be included in the domain name, including:

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

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

Another rule change of specific interest to foreign rights holders who rely on an Australian trademark registration or application as the basis for holding a .au domain name, is that businesses can now hold domain names .au on behalf of another company in their group of companies. , as long as they meet the Australian presence requirement.

When the new eligibility rules come into effect on April 12, 2021, they will apply to all .au domain names registered or renewed after that date. We recommend that registrants of .au domain names review their .au domain names to ensure that they will meet the new eligibility requirements. It may be necessary to take steps such as filing new trademark applications that exactly match your .au domain names or transferring your .au domain names to your Australian companies or subsidiaries to ensure the validity of your names domain name .au.