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Changes to .com.au and .net.au eligibility for foreign companies

From 12 April 2021, new rules for Australia’s .au domains come into effect, with potential impacts for foreign businesses.

Australian domain names are an important way for many foreign business entities to demonstrate a local connection to their Australian customers and suppliers.  Specific rules apply to determine who is eligible to use these domain names.

Eligibility for .com.au and .net.au domains

To be eligible to register a domain name in the .au country code top level domain (ccTLD), you must meet the Australian presence test.

Foreign business entities can do this by applying to register an Australian trade mark with IP Australia.  This also has the benefit of protecting the relevant trade mark for use with the registered classes of goods or services.

Currently, meeting this test allows foreign business entities to choose domain names that are closely and substantially connected to the Australian trade mark.  This means that, in addition to the full trade mark, acronyms or parts of the name can be used for the domain name.

These rules are set to become stricter, meaning that some foreign business entities may no longer satisfy the Australian presence test for their current or planned Australian domain name registrations.

New rules apply from 12 April 2021

Domain names aren’t owned by registrant companies; instead, they’re licensed by the ccTLD registrar for a specific period of time.

The new rules will apply not only to new domain name applications from 12 April 2021, but also to the renewal of any existing domain name registrations after the end of their current licence period. 

This means you could lose the right to renew a domain name you already hold.

Stricter tests for Australian domains

The new rules will require domain names to be exact matches with their trade marks, with only specific minor variations allowed.  This means domain names must now include all the words in the order in which they appear in their Australian trade marks, excluding:

  • DNS identifiers such as com.au
  • Punctuation marks such as an exclamation point or an apostrophe
  • Articles such as ‘a’, ‘the’, ‘and ’or ‘of’
  • Ampersands (the ‘&’ symbol)

Who is affected by the changes?

Foreign businesses currently using or planning to use Australian domain names that aren’t exact matches to their Australian trade marks will be impacted by the new regulations, unless they otherwise meet the Australian presence test.

How to resolve eligibility issues

If you are part of a foreign business, and you think you won’t meet the Australian presence test because of the new rules, you can:

  • Register a new Australian trade mark that is an exact match to the Australian domain name you want to use
  • Transfer your domain name to an Australian entity, which could involve transfer to either an existing company in your corporate group, or registering either a new Australian subsidiary or local branch of your business

If that sounds like you, you’ll need to take either of the above steps as soon as possible to avoid losing your existing rights to your Australian domain name.  If you don’t, a third party, like a competitor, could gain better rights to your Australian domain name or Australian trade mark.

Bell Legal Group’s experienced IP lawyers can help your foreign business entity secure your domain name and trade mark registrations in Australia.  To safeguard your company’s Australian domain from the new changes, schedule a consultation with our team now.

If you have any queries regarding this article or need legal assistance please call us on 07 5597 3366 or fill out the ‘Contact Us‘ form at the bottom of the page.

Please note that this article has been prepared by Dylan Kerrigan, Senior Associate at Bell Legal Group, for information purposes only. It is not legal advice nor should it be relied upon as such.