Reading time: 6 minutes

On 12 April 2021, a new set of rules came into effect, introducing changes for .com.au and .net.au domain names. The new rules apply to all .com.au and .net.au domain names that are registered or renewed on or after this date. In short, if you rely on an Australian trade mark as the basis for satisfying the Australian presence eligibility requirement to hold a .com.au or .net.au domain name, the domain name must be an exact match of the Australian trade mark. Otherwise, you risk having your domain name suspended or cancelled. This new rule is particularly important for foreign persons or entities who often rely on this option to meet the Australian presence requirement. This article discusses some of the key aspects of the new eligibility rules and how these changes may affect you.

Previous Eligibility Rules

To be eligible to hold a .au domain name, you need to first demonstrate that you are ‘Australian’ as defined in the rules, also known as the Australian presence requirement. One of the ways in which you can meet the Australian presence requirement is by owning a registered or pending Australian trade mark. Under the previous eligibility rules, you would be eligible to hold a .au domain name that was:

  • an exact match, abbreviation or acronym of the trade mark; or
  • otherwise closely and substantially connected to the owner.

Relying on an Australian trade mark under the previous rules was particularly common for foreign persons or entities that could not meet other eligibility criteria to satisfy the Australian presence requirement.

New Eligibility Rules From 12 April 2021

Under the new rules, if you are using a registered or pending Australian trade mark to support your eligibility to hold a .au domain name, the domain name must be an exact match of the trade mark. An exact match means that the domain name is identical to the words which are the subject of the Australian trade mark and in the same order, aside from:

  • DNS (Domain Name System) identifiers, such as com.au or .net.au;
  • punctuation marks, such as an exclamation point or an apostrophe;
  • articles such as ‘a’, ‘the’, ‘and’ or ‘of’; and
  • ampersands.

It will no longer be sufficient if the domain name is an abbreviation or acronym of the trade mark, or is ‘closely and substantially connected’ to the trade mark.

The table below provides examples of when a com.au domain name may or may not satisfy this new rule.

Australian trade mark

Domain name

Is the domain name eligible?

LEGALVISION

legalvision.com.au

Yes: the domain name is an exact match to the words in the trade mark.

lv.com.au

No: the domain name is not an exact match of the trade mark.

visionlegal.com.au

No: the domain name is not in the same order as it appears in the trade mark.

Who Is Impacted by the New com.au Eligibility Rules?

These new rules affect you if you:

  • rely on an Australian trade mark as the basis for meeting the Australian presence requirement; and
  • hold a .com.au or .net.au domain name that is not an exact match of the Australian trade mark, as explained above.

In other words, if you are looking to register or renew a .au domain name using an Australian trade mark to satisfy the Australian presence requirement, the domain name must be an exact match of the Australian trade mark for you to be eligible (or remain eligible) to hold that domain name, after 12 April 2021.

The rule changes are particularly significant for overseas persons or entities who are unable to meet any of the other eligibility criteria to support their com.au domain names.

What Can Holders of Affected .au Domain Names Do?

To ensure you are eligible or remain eligible for your .com.au or .net.au domain name, you should consider either:

  • registering an Australian trade mark that exactly matches the words contained within your current or proposed domain name; or
  • changing the basis on which you meet the Australian presence requirement.

For example, you may wish to consider transferring ownership of your .au domain names to a new entity (e.g. an Australian subsidiary) that is eligible.

Key Takeaways

From 12 April 2021, if you are applying for or renewing a .com.au or .net.au domain name relying on an Australian trade mark to meet the Australian presence requirement, you must ensure that the domain name is an exact match of the trade mark. For current .com.au and .net.au domain name holders, we recommend: 

  • reviewing all of your .com.au and .net.au domain names and seeking advice on whether these satisfy the new eligibility rules; and
  • considering what steps you may need to take to ensure they remain valid. 

If you have any questions about your .com.au and .net.au domain name eligibility, or for assistance with registering Australian trade marks, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

Can I use a trade mark as the basis for having a .com.au or .net.au domain name?

Yes, you can use a trade mark to meet the eligibility requirements for having a .com.au or .net.au domain name. However, from 12 April 2021, the domain name must match the trade mark exactly. 

What should I do if my trade mark does not match my com.au or .net.au domain name exactly?

If you rely on your trade mark for .com.au or .net.au eligibility and your trade mark does not directly match your domain name, you should consider registering a new trade mark, changing ownership of the domain name to an eligible entity, or changing your ‘Australian presence’ requirement with your domain name registrar.

What does an exact match mean?

For your trade mark to be an exact match of your domain name, the same words must appear in the same order. However, you do not need to use the exact same punctuation. You also do not need to include certain articles, such as ‘a’, ‘the’, ‘and’ or ‘of’.

Webinars

Legal 101 for SaaS Companies

Thursday 22 July | 11:00 - 11:45am

Online
Understand the contracts you need for your SaaS business with our free SaaS legal essentials webinar.
Register Now

Construction Contract Essentials

Thursday 12 August | 11:00 - 11:45am

Online
Understand how construction contracts are drafted and how to protect your construction business.
Register Now

Startup 101: Understanding Cap Tables and ESOPs

Thursday 19 August | 11:00 - 11:45am

Online
Cap tables and employee share option plans are essential for fast-growing startups. Learn more with this free webinar.
Register Now

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.

The majority of our clients are LVConnect members. By becoming a member, you can stay ahead of legal issues while staying on top of costs. From just $119 per week, get all your contracts sorted, trade marks registered and questions answered by experienced business lawyers.

Learn more about LVConnect

Need Legal Help? Get a Free Fixed-Fee Quote

If you would like to receive a free fixed-fee quote or get in touch with our team, fill out the form below.

  • 2020 Excellence in Technology & Innovation – Finalist – Australasian Law Awards 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice – Winner – Australasian Lawyer 2020 Employer of Choice Winner – Australasian Lawyer
  • 2021 Fastest Growing Law Firm - Financial Times APAC 500 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year - Australasian Law Awards 2021 Law Firm of the Year - Australasian Law Awards
  • Most Innovative Law Firm - 2019 Australasian Lawyer 2019 Most Innovative Firm - Australasian Lawyer