22/03/2021

After auDA’s decision to implement direct registration in the second level (eg. <yourbrand.au>) in 2019, a full review of the existing policies that apply to domain name registration took place. This review resulted in the “au Domain Administration Rules – Licensing” (“the Licensing Rules”), a consolidation of more than 30 auDA policies. These new Licensing Rules apply to all namespaces within the dot.au domain (with the exception of gov.au and csiro.au namespaces).

New .au Licensing Rules

The new Licensing Rules include:

  • limiting of registration of domain names by foreign traders to exact matches of a pending or registered AU trade mark;
  • the omission of the domain monetisation test for <com.au> and <net.au> namespaces to limit the use of this loophole by domainers to register domains for sale; and
  • eligibility rules for direct registration in <.au>.

The majority of the Licensing Rules will commence on 12 April 2021 and apply to all existing registrations, however, the commencement date of the rules relating to dot.au namespace (direct registration), id.au namespace and Internationalised Domain Names is yet to be determined.

If you are a foreign company, you need to check you have trade mark applications/registrations that are an exact match of your dot.com.au domain name. If not, you will need to file a trade mark application before 12 April to avoid becoming ineligible to hold your current domain name(s).

The Rules on Direct Registration

Direct registration has always been a contentious topic in the <.au> space which is widely regarded as one of the more restricted domain name spaces and until 2019 all proposals for the introduction of direct registration were rejected. The new Licensing Rules provide an “unbounded” system for direct registration i.e., the only restriction on registration is that a registrant must have an Australian Presence (Australian registered company, resident, citizen, trade mark owner, majority Australian partnership etc) (2.4.3). This Australian Presence must continue throughout the licence period (2.11.4). Foreign companies or individuals can still register in the dot.au domain space, provided they have a corresponding trade mark application or registration.

Importantly, if relying on trade mark registration to satisfy the Australian Presence requirement, the trade mark must incorporate words that correspond with the domain name and remain pending/validly registered throughout the domain name licence period, meaning that registrants cannot rely on logo marks without any verbal elements to meet the Australian presence requirement. Additionally, the domain name applied for must be an exact match of the word mark or word(s) within the mark.

Priority of Rights

When second level names launch, the only priority of rights that will be recognised are prior identical domain names registered at the third level in the <.au> space (eg <.com.au> < .net.cu>.<.org.au> (prior dot.au name)). There are two levels of priority status, namely, Category 1 for domain names registered up to and including 4 February 2018 and Category 2 for domain names registered between 5 February 2018 and 30 September 2019 (it is possible these cut-off dates may change when the commencement date of second level names is determined). There is no priority recognised in relation to trade mark rights.

The owner of an existing dot.au name at the third level will have 6 months to register the same name in the second level <.au> space but will need to make an application for priority status (including payment of an application fee) to secure this priority. In the case of competing applications for the same domain name, Applicants for priority will need to provide proof of the qualifying prior domain name and demonstrate ongoing eligibility to hold that name. Category 1 registration will take priority over Category 2 in determining which applicant in entitled to register the same name.  Time limits (yet to be released) will be imposed on claims to Category 1 rights, otherwise these rights will automatically default to Category 2. Where there are multiple Category 1 applicants for a name, the applicants must agree between themselves as to which party is entitled to register the domain name. Annual renewal fees will be payable during any negotiations until a decision is reached or all competing applicants fail to make payment. The string contention process will therefore potentially be open-ended. Priority between competing Category 2 applicants will be resolved on the basis of the earliest creation date of those rights.

Registration will otherwise be on a “first come, first served” basis.

There is no guidance provided on the cost of registration at this stage.

What do the .au licensing changes mean for your business

If you are an Australian business with an existing dot.au name – you should review the new Licensing Rules, watch out for the launch of registrations in the <.au> space and immediately apply for recognition of your priority right to register or block a third party registering the same domain name.

If you don’t currently own a <.com.au> or <.net.au> name, you should consider registering one now as this will at least confer Category 2 priority in relation to registration of the same name in the <.au> space.

You should otherwise instruct your domain name registrar to watch for launch and register any preferred names as soon as registrations open as registration will otherwise be on a first come, first served basis.

If you are a foreign trader, you will need to register (and maintain) an exact match of your trade mark to register the corresponding name in <.au> before 12 April 2021.

We recommend you allocate a budget for online brand protection before the launch of registrations in the <.au> space as a fresh round of cybersquatting is anticipated. We also recommend you actively monitor new domain name registrations in the dot.au space, and enforce your trade mark rights under the auDRP to recover names in this space that include your brands.

 

Authors: Lisa Lennon

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