IP Spotlight 9 February 2021

This requirement will affect not only those seeking to register new domain names, but also existing holders of com.au and net.au names, as eligibility for continuing registration will need to be demonstrated at the time of renewal, come implementation of the new rules from 12 April 2021. This means that, in particular, international traders who do not otherwise have a Australian commercial presence may need to review and revisit their trade mark and domain name strategies and ensure that they have a relevant Australian trade mark to support each domain name which they wish to register or renew. The potential forced divesting of domain registration within this space may also provide discerning traders who have, to date, been prevented from registering their preferred domain name(s) an opportunity to secure these domain names if they are unable to be renewed by their current holders. ORG . AU DOMA I N NAMES FOR NOT- FOR- PROF I T ORGAN I SAT IONS Within the org.au space reserved for not-for-profit entities (NFPs), the new rules will see unincorporated associations which are not on the Register of Charities established by the Australian Charities and Not for Profit Commission (ACNP) no longer eligible to hold a org.au domain name. Instead, these unincorporated associations may need to seek registration within the asn.au space. NFPs wishing to hold onto their org.au domain names may otherwise need to consider incorporating as an association or setting up a non- for-profit company limited by guarantee. That said, changes to allocation rules within the org.au space will broaden the range of names available to be registered by eligible NFPs. LAUNCH OF THE NEW SECOND LEVEL . AU DOMA I NS Shorter “second level” domain names – eg, wrays.au – are likely to become available for registration by Australian internet users by the middle this year. However, due to their expected popularity, and in order to recognise existing holders’ rights within the com.au, net.au and other “third level” namespaces, a priority allocation process will apply to initial registration in the .au namespace. Unlike existing third level domains which have more stringent eligibility and allocation rules, anyone who has an “Australian presence” will be eligible for a second level .au domain name licence once launched. An Australian presence will generally be established by an Australian citizen or entity, or an owner of an Australian trade mark (provided that the domain name

being applied for is an exact match of the words which are subject of the Australian trade mark if the registrant does not otherwise have an Australian presence). Importantly (for those with a direct Australian presence at least), the .au namespace will open up the possibility of registering any available domain name for any purpose, provided that it does not appear on the list of reserved names. However, priority will be provided during a sunrise period (6 months from the date of the .au launch) to existing “third level” domain name holders (eg, for the equivalent .com.au, . net.au, .org.au, .id.au, .gov.au or .edu.au domain name). For example, if you already hold wrays.com.au, you will have priority to register wrays.au – subject to whether other third parties hold an earlier created domain name (eg, wrays.net. au) for the same mark, in which case it may be necessary to contact the other holder(s) to negotiate and/or formulate a strategy to secure the desired domain name. WHAT NOW FOR AUSTRAL I AN DOMA I N NAME HOLDERS? – If you trade online in Australia, but do not otherwise have an Australian presence (via an ACN, ABN or ARBN, for example), you should ensure that you hold or have applied for an Australian trade mark exactly matching the com.au, net.au or .au domain name that you wish to register. – If you are an existing domain name holder and it is not an exact match of your Australian trade mark, you should take steps to ensure that you remain eligible to hold it (eg, by seeking a new Australian Trade Mark or transferring domain ownership to an entity that is eligible to hold it). – If you are an unincorporated association not on the ACNP Register of Charities (eg, a sporting club or other special interest club), you may need to consider applying for the equivalent asn.au domain name and foregoing your org.au domain. Alternatively, you may need to consider another legal structure which would allow you to remain eligible for the org.au domain name. – If you wish to obtain registration within the .au namespace, you should undertake preliminary due diligence to ensure that you will have priority (and eligibility) to apply for your desired .au domain name once launched later this year. Please contact Wrays’ Trade Marks Group if you require any assistance with these matters.

UPCOMING CHANGES IN THE .AU DOMAIN SPACE

12 April 2021 will see new rule changes in the Australian “.au” domain space, with potential to affect holders of existing com.au, net.au and org.au domain names, as well as eligibility to apply for new domain name registrations in this space.

In addition, a new general .au domain is likely to be launched some time later in 2021, with the launch date yet to be determined (but possibly in around July 2021).

Upcoming changes to eligibility criteria for com.au and net.au domains will require domain holders who rely only on an Australian trade mark to establish Australian presence (ie, primarily foreign companies) to ensure that their domain name is an exact match with their Australian trade mark and not simply “closely and substantially connected”, as is acceptable at present. This means, for example, that the owner of an Australian trade mark for WRAYS INTELLECTUAL PROPERTY who does not otherwise have an Australian presence will not be able to register or renew domains for wrays.com.au or wraysip.com.au, but will only be eligible for wraysintellectualproperty.com.au, being an exact match with the words of the trade mark.

COM . AU AND NET. AU DOMA I N NAMES FOR

COMMERCI AL ENTERPR I SES In general, domain names in the com.au and net.au domain space are reserved for individuals or commercial entities trading within Australia. An Australian commercial presence can generally be established by submitting the individual or company’s ABN, ACN or ARBN, or by a foreign company submitting details of its Australian trade mark registration or application as recorded on IP Australia’s database.

MARIE WONG Principal

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