From 24 March 2022, new .au domains will be released, so that shorter domain names (e.g. mullinslawyers.au instead of mullinslawyers.com.au) will become available.
The release isn’t just about domain names and there are several steps organisations should be taking now to review their structure, licensing arrangements and consolidate their IP rights, ownership, and registration.
All organisations should be considering whether to apply for registration of a .au domain name (which should be a no-brainer for most). That shortened form of domain is likely to have additional relevance to organisations which host mobile apps or where (as in most cases) people engage with you via smartphone. It is anticipated that there will be significant uptake in that sector, given the ease of use which results from typing a shorter domain – i.e. having to use only .au instead of .com.au, .org.au or even .edu.au.
The first step is for organisations and domain name owners to review their position now to prepare for the release of the new .au domain extension and to take any other steps necessary to put themselves in the best position to secure their .au domain if required.
Organisations will need to establish that they have an Australian presence to be eligible to register .au domains and to maintain registration of their existing .com.au, .org.au, etc domains. Existing domain holders will need to satisfy those requirements when renewing their domains and foreign companies may need to register a trademark that is an exact match to their domain to avoid cancellation.
Why Does This Matter?
There are no proprietary rights in domain names, and they are secured on a first to register basis. However, the release of .au domains requires a different process to manage the impending en masse release on 24 March 2022 and priority rules which set out who will be entitled to register a name will be applied.
Because so much activity is transacted on the internet, securing appropriate domains, without interference or confusion, is fundamental to the success of many organisations. It will be necessary to assess whether confusion is likely to occur if others secure and use the same or similar .au domain to an existing domain (for example .com.au) in claims relating to the increasing use of critique or even gripe sites using similar names. Process may apply to register domains from 24 March 2022.
To register domains, organisations will need to establish their Australian presence. This may be done through Holding an Australian registered TM (or application) which is an exact match to the domain sought. For example, holding the trademark ‘Mullins Lawyers’, if the domain www.mullinslawyers.au is sought. If there is no other connection with Australia the domain will need to be an exact match with the trademark.
Organisations can establish eligibility, by confirming that their legal entity has a relevant connection to Australia such as where they are a registered Australian Company or ABN holder.
In those cases, a .au domain may be secured with greater flexibility. Similar domains (not limited to exact matches) will be allowed such as:
As the rules have changed, all organisations should ensure that the entity which holds current domains is entitled to retain them. This is particularly relevant to .org domain holders, which will need to be registered with ACNC if they are unincorporated. Otherwise, they will need to change structure.
Who Has Priority?
Holders of existing Australian domains (such as .com.au holders) will be able to apply for priority status from 24 March 2022 to 24 September 2022. For example, as www.mullinslawyers.com.au is held by our firm, we will have priority to apply to register www.mullinslawyers.au. If we don’t make an application during the priority period, and if no other applications claiming priority have been lodged, the .au direct name will become available to the public. Accordingly, organisations will need to consider whether to apply, even if there are no other eligible parties. Otherwise, following the expiration of the six-month priority period on 24 March 2022, the .au domain will become generally available.
Will There Be Conflicts?
To address that issue a priority system will apply under which:
- first priority is given to domain names registered before 4 February 2018;
- second priority is given to domain names registered after 4 February 2018;
- if there is more than one applicant with first priority, they will be directed to negotiate and see whether an agreement can be reached on the allocation of the .au The domain will not be granted to any first priority applicant if they fail to reach an agreement. Rather, the domain name will remain reserved indefinitely (and reviewed annually until only one applicant remains).
- if there is no priority, but more than one-second priority applicant, the earliest registered domain name will prevail.
The third-party use and licensing of .au domains have undergone a substantial change from the previous rules. In short, domain holders will be prohibited from renting, licensing or leasing their domain name/s. That will also apply to sub-domains such as brisbane.mullinslawyers.au, which are commonly used where businesses (including franchises) operate in multiple locations.
Organisations should be reviewing their domain holding to ensure that the entity which requires the use of the name is the holder. An exception applies to related entities, but only if they meet the strict requirements of the Corporations Act and only in relation to either a .com.au or .net.au domain (but not other .au domain extensions). Organisations should consider whether it is necessary to transfer domains (incl. to third parties) and whether assignments back of ownership are also required – for example on termination of agreement/commercial relationship. That review should be undertaken in conjunction with a review of the use/holding of domains by entities within or external to the corporate group. This is also a common problem where the owner of a business has registered a domain in their own name and those registrations must also be addressed.
Should I Review My Trademarks?
Trademarks have always provided a form of protection against domain infringement and cyber squatters, particularly where marks are contained in domain names (and often with the website content and metatags which improve search engine results).
The implementation of the new .au domain rules is likely to make it more important for organisations to take a consistent approach across their various name registrations (i.e. domain, business/company name and trademark) to properly protect their brands and reputation.
What to Do Now
Organisations should be reviewing their existing domains and making sure that they will meet the registration requirements under the new .au rules. It is not too late to take those steps now and to prepare for the priority allocation of names on 24 March 2022.
Domain holders who are one of a group of companies should ensure that the correct entity holds the domain. Similarly, any organisation which licences the use of a domain (including franchisees) must consider the new restrictions on leasing and licencing/leasing domains and sub-domains.
As foreign entities need to satisfy new eligibility criteria, they should be reviewing their position now, not only for new domains but to maintain their existing registrations.
As always, a consistency of approach should be adopted in relation to appropriately securing your brand and it may be timely to review your various registrations (tm, company/business, and domain) to ensure consistency. Organisations may also have the ability to leverage off their trademarks/business/company name to register new domains – permitted to refer traffic back to the organisation’s main website.
Consideration could also be given to registering domains containing terms or trademarks associated with the organisation, including (for example) product or event names, particularly where linked to trademarks.