Does your domain name end with a “com.au” or “net.au” or “org.au” and “asn.au” and you are a foreign entity that uses an Australian Trade Mark to support that domain registration? If so, you may not be able to renew or apply for a domain if it doesn’t exactly match a trade mark you own.
These new rules will apply from12 April 2021. Yes – that’s less than two months from now.
If you are a foreign entity and your trade mark is a word and that same word is the domain name to which “.com.au” or any of the other top-level domains is added, then all is OK. However, if the trade mark is not the same, you should check the rules below. If the trade mark and the domain name are the same, you do not need to do anything at this time.
However, you need to be aware that the changes coming into force will apply the next time you want to register or renew a “.com.au” or “.net.au” domain incorporating your new trade mark. They also apply if you intend to transfer a domain to your entity upon the purchase of a domain name and the corresponding trade mark.
For those with similar domain names to either the trade mark you have applied for, or an existing registered trade mark, then the following information is very important to know.
When the “.au” Domain Administration (auDA) changed the eligibility rules, it strengthened the Australian presence requirement hence the effect of this change on domains held by foreign entities. As for Australian businesses they are not affected since they meet the local presence test and their domains do not need to meet the exact match criteria. The new rules state that the domain name must be an exact match to the relevant trade mark and apply to:
- newly applied-for domains;
- to domains that are transferred to a new owner; and
- all domains that are being renewed after 12 April 2021.
So what is an exact match? This requirement is different from the old rule, which allowed the domain name to be ‘closely and substantially connected to your trade mark’.
The domain name MUST include all the words in the same order as they appear in the Australian Trade Mark or Trade Mark application. However, there are some exceptions:
- you can ignore the .com.au and other DNS identifiers;
- you can ignore punctuation marks in the trade mark, such as: ‘! And ‘ ;
- you can ignore joining terms such as ‘a’, ‘the’, ‘and’, ‘of’; and
- you can ignore ampersands ‘&’.
The new rules are tough, and if your domain is not an exact match, you need to do something soon or make sure you act before the next domain renewal date.
There are many possibilities when considering how to act:
- Change your domain name to ‘match’ your trade mark; or
- Change your trade mark to ‘match’ your domain name.
At least one of the new rules allows domain registrations to be owned by a related body corporate, as long as the related company meets the Australian presence requirement.
You can read more about the rules changes at .auDA.
All of the above options have several important implications. So the way forward may not be as simple as it seems. Please consider obtaining professional advice.