New auDA Licensing Rules Raise the Bar for Foreign Branded Domain Name Registrants | Denton

Are you a foreign entity with an Australian domain name registration (e.g. .com.au or .net.au)?

The new auDA licensing rules that came into force on April 12, 2021 have raised the bar for foreign entities that rely on an Australian trademark registration as the sole basis to demonstrate the required “Australian presence”.

Any domain name license applied for, renewed, or transferred after April 12, 2021 must exactly match the words of the corresponding trademark registration (including pending applications), excluding punctuation marks, articles such as ‘a’, ‘the’, ‘and’ or ‘of’ and ampersand (‘&’).

This is a change from previous eligibility rules, under which a domain name could simply be “closely or substantially related” to the words of the corresponding trademark – which allowed abbreviations and acronyms.

The new rules also provide that an Australian company belonging to a group of companies can apply for and hold a .com.au or .net.au domain name license on behalf of a related legal entity, provided that the related company also meets Australian presence requirements.

As the to transfer or renewal from an existing .au domain name will have to meet the updated requirements, the new rules must in particular be taken into account when:

  • conduct diligent searches for a sale of assets; or
  • assist in the renewal of a .au domain name;

as the ability to license ownership of the domain name will be affected if it does not match an identical Australian trademark registration.