In brief 3 min read
Recently, au Domain Administration Ltd, the administrator and self-regulatory policy body for the .au country-code Top Level Domains (ccTLD), released its draft Licensing Rules. In particular, the proposed changes seek to narrow the eligibility rules regarding non-Australian entities with no connection to Australia.
Background – au from around here?
In Australia, there are no proprietary rights in a domain name. A registrant merely holds a licence to use the domain name subject to certain conditions. Applicants wishing to register a domain name in an existing second level domain name such as .com.au or .net.au (a 2LD) must have an Australian presence, however this test differs between various 2LDs.
The current eligibility rules allow an offshore entity without an Australian connection to register any domain name in the .com.au and .net.au name spaces, provided it holds an Australian trade mark registration application. For example, the owner of a registered Australian trade mark for JKLM may register the domain name wxyz.com.au, which is unrelated to the registered mark.
The draft Licensing Rules form part of a broader review of auDA's published policies. They propose to amend the current eligibility rules for the .au namespace as set out in the Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (2012-04), to limit the circumstances in which the 'Australian presence requirement' can be satisfied by reference to a trade mark, particularly for non-Australian entities that otherwise have no connection to Australia.
The changes and their effects
There are three key proposed changes to the current licensing system for 2LDs.
- First, an applicant for, or the owner of, an Australian trade mark registration will only be able to register a domain name that is an exact match to their Australian trade mark application or registration if the trade mark application or registration is the sole basis for their meeting of the Australian presence requirement. For example, the owner of the registered Australian trade mark JKLM could register jklm.com.au but not wxyz.com.au. Corporate identifiers such as 'Pty Ltd' and 'LLC' and articles such as 'the', 'and' and 'of' are permitted. This requirement means non-Australian entities who are otherwise not doing business in Australia would be unable to register domain names unrelated to their Australian trade marks.
This requirement means non-Australian entities who are otherwise not doing business in Australia would be unable to register domain names unrelated to their Australian trade marks.
- Second, restricting sole reliance on eligible trade mark applications or registrations to word marks. This means a domain name could not be registered relying solely on a logo or device trade mark application or registration (even if it includes letters or numbers in the logo). In addition, eligibility to hold a domain name is lost if the trade mark registration relied upon is cancelled or removed from the Register, or if the trade mark application lapses.
- Third, conforming the definition of 'Australian presence' under the threshold test across namespaces. Presently, 'Australian presence' is defined differently, and so gives rise to different criteria, across the various namespaces. This change will make it easier for businesses to understand the 'Australian presence' requirement.
The new Licensing Rules will apply to domain names created or renewed after the new Licensing Rules come into effect. This means existing domain names relying solely on logo trade marks or trade marks that do not match the domain name, would not be renewed under the new Licensing Rules.
Commencement of the changes
There may be further revisions of the Licensing Rules before they are formally adopted, as the Department of Communications and the Arts has requested that auDA undertake further public consultation on the proposed changes
You can view the draft Licensing Rules here, or find further details about the current public consultation process here.