Direct .au domain names – a good domain name comes with great responsibility – Trademark

What is a domain name?

A domain name is simply an address on the Internet that people can use to find resources like websites or send email. For example, “bartier.com.au is a domain name that points to the Bartier Perry Lawyers website.

In August 2021, auDA (the body that develops and administers the rules for domain names in the .au country code top-level domain) changed its licensing rules to create a new category of domain names. Shorter, simpler domain names will end in .au rather than .com.au, .net.au, .org.au, .gov.au or .edu.au

From March 24, 2022, anyone with a local connection to Australia (including businesses, associations and individuals) can register the new domain name category. All Australian companies have until September 20, 2022 to reserve their equivalent .au domain name, it then becomes accessible to the general public.

This new category of domain names allows users to register shorter, more memorable names online; however, it also creates another opportunity for cybersquatters and competitors to conduct fraudulent activities. Opportunists could register your .au domain name to impersonate your business, cyber squat the domain, or direct your business’s web traffic.

For example, if you currently have registered “yourcompany.com.au”, someone could try to register “yourcompany.au” or “yourcompanycom.au” and use these domains to conduct fraudulent activities.

How to protect yourself

To help protect your business from opportunists, regulators are recommending that all Australian businesses with existing domain names register their .au equivalents by September 20, 2022. If a business does not reserve their direct equivalent .au domain name. During this six-month period, this name will become available to the public on a first-come, first-served basis.

You can reserve your .au domain name by visiting an auDA-accredited registrar.

The new category of domain names – summary key points

• Shorter, simpler and more memorable .au direct domain names can now be registered for use (e.g. “.auda.au”), compared to namespaces ending in .com.au, .net.au , .org.au, .gov. au or .edu.au;




• Licensing rules provide new eligibility criteria for domain name registration in Australia and allow owners of existing domain names to claim priority status, allowing them to “own” and register the exact same version .au from their existing domain names with an auDA-accredited registrar. until
  September 20, 2022 (this period is known as the “Priority Allocation Period”);




• After September 20, 2022, .au domain names will become available to all other eligible domain name holders with an “Australian presence” on a first-come, first-served basis;




• If you have not yet been able to register a domain name due to availability, eligibility or otherwise, we recommend that you check again after September 20, 2022.

Ability to register a ‘.au’ domain name

The ‘Australian presence’ requirement can be met in a number of ways, with registrants having to meet 1 of the 17 possible eligibility categories under AUDA licensing rules. Here are some examples :

• be an Australian citizen;




• a company registered in Australia under the Companies Act 2001 (Cth);




• an entity with an Australian Business Number (NBA); Where




• a charity registered under state or territory law and listed on the state or territory cooperative registry.

In addition to the examples above, the easiest way to demonstrate the ‘Australian presence’ requirement is to hold a pending or registered Australian trademark that appears in IP Australia’s trademark database. The trademark will need to match exactly the words (i.e. domain name) you wish to register. This means that “the domain name must include all words in the order in which they appear in the Australian trademark, excluding:

• DNS identifiers such as com.au;




• punctuation marks such as an exclamation mark or an apostrophe;




• articles such as ‘a’, ‘the’, ‘and’ or ‘of’; and




• ampersand.

For foreign entities that do not have a registered trademark or trademark application, it is useful to find out if a trademark is registrable and apply if they are looking for a .au domain name. There are also similar presence requirements required for existing .com.au and .net.au domain names which can also be satisfied by trademark registration.

Priority Allocation period and disagreement between registered claimants

In some cases, multiple individuals or entities may be eligible to request priority status for the same reserved .au domain name. This can happen when different registrants hold the same name in different namespaces (auDA calls this a “disputed name”).

For example, registrant Y owns “yourbusiness.com.au” and registrant Z owns “yourbusiness.net.au”. In such cases, the priority status of applicants is determined on the following basis:

• Priority category 1: names created no later than the deadline for February 4, 2018; and

• Priority category 2: names created after the deadline for
  February 4, 2018

If you need more clarity, auDA also has a priority status tool available on its website.

In the event of multiple applications for a disputed name, the following principles apply:

• Category 1 candidates have priority over category 2 candidates;




• When there are several category 1 applications, the name is allocated after agreement/negotiation between the category 1 applicants; and




• When there are only category 2 candidates, the name is attributed to the candidate whose creation date is the oldest.

In the event of a disagreement between multiple Category 1 applicants, the usual process is for those registrants to negotiate among themselves who will be assigned the new .au domain name for which they have applied. If no agreement is reached, the direct .au name will remain subject to priority hold. For other domain name disputes, auDA also has its own dispute resolution policy.

Register your new domain name now

If you have an existing .com.au or .net.au domain, it makes sense to also get a .au direct domain, which is both strategic and defensive for your business. You can request priority status through a domain registrar or any other accredited registrar that offers direct names. Application filing fees vary from registrar to registrar. You will need to request a priority token from auDA for your application to be accepted. It is important to ensure that your priority status application is up to date before submitting your application, as you will not be able to modify it while the application is active.

If you have any questions or need assistance regarding trademarks and domain names, please do not hesitate to contact us.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.