Changes to Australian domain name rules will invalidate some existing domain name registrations

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The  .au Domain Administration Ltd (auDA), which administers rules for .au domain names, is changing the eligibility requirements for a domain name registrant having an Australian presence. These changes take effect from 12 April 2021, and may affect the validity of existing “.com.au” and “.net.au” domain name registrations.

The .com.au and .net.au domain names are currently available on the basis that they are:

  1. exact matches of the registrant’s name (company, business, statutory or personal name) or trade mark;
  2. abbreviations or acronyms of the registrant’s name or trade mark; or
  3. on the basis that they are “closely and substantially connected” to the registrant (which could include closely and substantially connected to a trade mark owned by the registrant or its name or the nature of its business).

However, changes to the rules mean that .com.au and .net.au domain names must now be exact matches:

  1. of the registrant’s name or an acronym thereof; or
  2. of the registrant’s trade mark (although punctuation, articles (a, the, of, and), DNS identifiers (.com.au) and ampersands may be left out).  

Domain names that were registered on the basis of a close and substantial connection to the registrant or as an abbreviation of the registrant’s name will no longer meet the eligibility criteria.  Acronyms and abbreviations of trade marks will no longer be permitted.

This means that some existing registered domain names may become invalid and unrenewable after 12 April 2021 because they do not satisfy the new criteria.

Next steps

If it appears that one of your domain name registrations may not satisfy the new criteria, you may now wish to apply for a new trade mark that is an exact match of the existing domain name to ensure that it can be maintained.  A trade mark registration or a pending trade mark application are both sufficient to meet the criteria.

However, it is possible that an application for a trade marks that is an “exact match” for existing domain names will not be registerable (e.g. due to descriptiveness or prior conflicting registrations), in which case you may need to seek registration of a corresponding Australian business name as an alternative. 

Please contact POF for further guidance if required.

BSc LLB FIPTA

Prior to joining the firm, Russell worked as a solicitor with a major Melbourne law firm. His practice encompasses all aspects of trade marks, including searching and advising on the registrability of marks, applying for and obtaining registration of marks in Australia and overseas, and enforcement of trade mark rights.