Are you eligible to hold that domain name?

November 25, 2024

Executive Director – IP

AUTHOR

KEY CONTACT

In Australia “.com.au” and “net.au” (“Australian Domain Names”) are considered an essential element in establishing a reputable Australian brand and creating an authentic connection to Australian customers. The registration of Australian Domain Names is limited with specific requirements for registration, ensuring registration is available to parties with a local connection.

Unbeknownst to some business owners, strict eligibility criteria are required to be met over and above simply the availability of these names. By not meeting these requirements, businesses risk having to de-register the domain – potentially losing valuable goodwill, brand equity and brand-building efforts like SEO.

To be eligible for an Australian Domain Name there are two main elements:

1. Eligibility

The registrant must have:

a company under the Corporations Act 2001(Cth);
a Commonwealth entity as defined in section 10 of the Public Governance, Performance and Accountability Act 2013(Cth);
a Registrable Body under the Corporations Act 2001(Cth);
an Incorporated Association under State or Territory legislation;
an entity or natural Person issued with an Australian Business Number under the A New Tax System (Australian Business Number) Act 1999 (Cth);
a Statutory Body under Commonwealth, State or Territory legislation that engages in trade or commerce;
a Trust issued with an Australian Business Number, but does not include a charitable trust or a public or private ancillary fund;
an Incorporated limited partnership under State and Territory legislation;
a Trading Cooperative under State and Territory legislation;
Government, being either the Crown or a Commonwealth, State or Territory statutory agency; or
a foreign legal entity or natural person who holds or has applied for an Australian Trade Mark.

2. Allocation

The domain name applied for must be:

a match of the Person’s company, business, statutory or Personal name; or
an acronym of the Person’s company, business, statutory or Personal name; or
a match of the Person’s Australian Trade Mark; or
a match to or an acronym of a name of a related body corporate or
a match or an acronym of a name of:
a partnership of which the Person is a partner;
a trust of which the Person is a trustee; or
a match or synonym of the name of:
a service that the Person provides;
goods that the Person sells (whether retail or wholesale);
an event that the Person registers or sponsors;
an activity that the Person facilitates, teaches or trains;
premises which the Person operates;
and which that Person is providing at the time of the application.

Foreign Entities

Foreign entities were previously able to register Australian Domain Names by owning a trade mark in Australia that was the same or similar to the domain name. Recently, there have changes to the tests used for foreign entities, which are now more strict. The current requirement is for a foreign entity to have an exact matching trade mark. Foreign entities also have strict requirements around licensing, renting or leasing their domain name to a third party.

Trade marks play a pivotal role in securing Australian Domain Names. A trade mark can be used as the basis for ownership of an Australian Domain Name, whether an Australian or foreign entity, although the Allocation requirements do differ. For foreign entities an exact matching Australian trade mark is essential is securing an Australian Domain Name and checks should be undertaken to ensure compliance with the new rules.

The eligibility criteria must be met at the time of registration and throughout the entire license period. When eligibility criteria isn’t met a domain name is susceptible to de-registration or an interested third party, such as a competitor seeking cancellation.

In practice, eligibility could be lost by a simple change to the company or business name is made.

To ensure compliance now is the time to check: