Developments to .au Domain Names in 2021: What to expect
2021 is expected to bring significant changes to the .au domain name system as we know it, from how .au domain names can be used, who can register them and what can be registered.
The .au Domain Administration Ltd (auDA) which develops and administers rules for .au domain names, announced late last year that new .au licensing rules are set to launch in April 2021 (Licensing Rules). The Rules are a consolidation and update of auDA’s current policies and guidelines (Current Rules) and will cover all aspects of the .au country code Top Level Domain for both registrants and registrars.
auDA has also separately, and more quietly, made certain timing changes in relation to its proposed roll-out of second level .au domain names (Second Level Names, eg forexample.au), meaning that we may see finally the launch of these domain names within the year, potentially with more registrants eligible to apply for priority to register second level matches of their names.
The Licensing Rules include changes to specific .au namespaces, and more general changes which would apply to all registrants of .au domain names. The Licensing Rules, with some exceptions, will come into effect on 12 April 2021. All .au domain names registered, transferred, or renewed on or after this date will be subject to the Licensing Rules.
For .au domain names which expire after this date, the Licensing Rules only apply after the domain names are next renewed (ie when the new domain name licence is created). Until then, these domain names will continue to be subject to the rules in place at the time they were registered, or last renewed.
Below sets out some of the changes arising from the Licensing Rules.
A. Changes affecting all .au domain names
Third party use of domain names and sub-domains
A new rule will prohibit registrants from renting, leasing, sub-licensing or permitting use of their .au domain names to third parties.
The sole exception to this is where the domain name is:
- either a .com.au or .net.au domain name; and
- registered for use by a related body corporate which meets the ‘Australian presence’ requirement (the main eligibility criteria for registering .au domain names). This is discussed further below at B.
A similar rule is introduced in respect of sub-domains.
A sub-domain is a part of the registered domain name which can be created and added before the registered name (eg pw.auda.org.au is a sub-domain of auda.org.au). Under the Licensing Rules, registrants can create sub-domains under their domain name licences provided that:
- any party using the sub-domain must meet the Australian presence requirement and all other eligibility criteria applying to that licence;
- the sub-domain is not used for illegal, unlawful or fraudulent conduct; and
- the sub-domain is not sold or leased under the domain name licence to any party.
These new prohibitions are intended to ensure the data on WHOIS accurately reflects who is behind a particular .au domain name and preserve trust in the .au namespace. However, this does mean that registrants who permit third parties to use their .au domain names and/or sub-domains must reassess these arrangements to ensure compliance with the Licensing Rules.
We note for example that Australian businesses involved in international franchises and distributorships that redirect their .au domain names to the websites of their franchisors or manufacturers may no longer be able to do so under these new rules, as the redirection may be considered use of their .au domain names by third parties.
‘Contractual capacity’ requirement
The Licensing Rules provide that registrants must have ‘contractual capacity’ to hold a domain name, reflecting the Current Rules.
However, as a departure from the Current Rules, in the event that a registrant loses capacity to hold a domain name (eg if the registrant company has been deregistered), the Licensing Rules will offer a 30-day grace period before the domain name is cancelled. The Current Rules deems a domain name to be automatically cancelled when the registrant ceases to exist.
Other notable changes include providing 2 calendar days for registrants who cancel their domain name licence to restore their domain names, and 30 days (compared to the 12 days under the Current Rules) to fix minor non-compliance issues.
B. Changes affecting .com.au and .net.au domain names
The main changes to these namespaces relate to:
- use of trade marks to meet the Australian Presence requirement;
- use of such domain names by related bodies corporate; and
- a new definition of ‘commercial entity’ which opens up the namespaces to new prospective registrants.
Trade marks and the Australian Presence requirement
In order to be eligible to hold a .au domain name, a registrant must establish that it has an Australian presence. One way this can be satisfied is by holding a registered Australian trade mark or pending application.
In the Current Rules, a registrant could register a domain name that was an exact match (effectively means a match of one, some, or all of the words), abbreviation or acronym of its trade mark. For example, a trade mark for ‘Old-Fashioned Lemonade‘ could be used to register domain names such as:
- ‘com.au‘ as an ‘exact match’;
- ‘com.au‘ as an abbreviation; and
- ‘com.au‘ as an acronym.
Conversely, the Licensing Rules will limit Australian trade mark applicants and owners to only be able to register a .com.au or .net.au domain name that is an ‘exact match’ of the words subject of their marks.
Definition of an ‘exact match’ will also be tightened under the Licensing Rules to mean, ‘all the words in the order in which they appear‘ in the trade mark, excluding DNS identifiers (eg ‘com.au’), punctuation marks, articles such as ‘a’, ‘the’, ‘and’, or ‘of’, and ampersands.
Taking the ‘Old-Fashioned Lemonade’ trade mark as an example again, under the Licensing Rules, the owner of the trade mark can only rely on the mark to register the domain names, ‘oldfashionedlemonade.com.au‘ and ‘oldfashionedlemonade.net.au‘. If the trade mark owner had previously used the mark to hold the ‘oldlemonade.com.au‘ domain name, it will no longer be eligible to hold that name.
This change impacts foreign entities in particular, as they usually seek to use this method to hold .com.au and .net.au domain names. To remain eligible to hold such domain names, these entities will need to change the basis on which they meet the Australian Presence requirement, or otherwise apply for further Australian trade marks which match the desired domain names.
Related bodies corporate
The new related body corporate rule in the Licensing Rules enables a company within a corporate group to apply for and hold .com.au and .net.au domain names on behalf of another company in the group. The company on whose behalf the domain name is held must by itself meet the Australian presence requirement (eg an Australian subsidiary or holding company).
Definition of ‘Commercial entity’
The .com.au and .net .au namespaces are for commercial purposes. Accordingly, only persons able to demonstrate this (and meet the Australian presence requirement) are eligible to register them.
The Current Rules provide that a person eligible to register domain names with these namespaces include an Australian registered company, partnership or sole trader, a person trading under a registered business name in Australia, a foreign company licensed to trade in Australia, and an owner or applicant for an Australian trade mark.
The Licensing Rules introduce the ‘commercial entity’ definition which captures this same list of eligible persons, but also widens the net to enable the following further types of entities to register domain names in these namespaces:
- an entity or natural person issued with an Australian Business Number;
- a statutory body under Commonwealth, state or territory legislation that engages in trade or commerce;
- a trust issued with an Australian Business Number (excluding charitable trusts and public or private ancillary funds);
- an incorporated limited partnership under state and territory legislation;
- a trading cooperative under state and territory legislation; and
- the Crown, Commonwealth, state or territory statutory agencies.
C. Changes affecting .org.au domain names
The .org.au namespace will see significant changes under the Licensing Rules, specifically:
- a new definition of ‘Not for Profit entity‘ which effectively excludes unincorporated associations from holding such domain names if they are not registered with the Australian Charities and Not for Profit Commission (ACNC); and
- the expansion of the range of .org.au domain names available to those Not for Profit entities.
Definition of a ‘Not for Profit entity’
The .org.au namespace is for non-commercial organisations.
Under the Current Rules such organisations include, associations incorporated in any Australian state or territory, charities and non-profit organisations operating in Australia (as defined in the organisation’s constitution or other document of incorporation), and sporting or special interest clubs operating in Australia, notably irrespective of whether they are incorporated or not.
The Licensing Rules update this list and provides that an organisation must fall within one of the 11 definitions of ‘Not for Profit entity‘ in order to apply for and hold .org.au domain names. These include:
- an incorporated association under state or territory legislation;
- a company limited by guarantee under the Corporations Act 2001(Cth);
- a charitable trust, or public or private ancillary fund endorsed by the Australian Taxation Office as a deductible gift recipient; and
- an unincorporated association that appears on the ACNC Register of Charities.
Importantly, this means that unincorporated associations which are not registered with the ACNC (eg some sporting or special interest clubs) will no longer be eligible to hold their .org.au domain names. These entities will need to either be registered with the ACNC, or change their legal structures in order to retain their domain names.
Expansion of available .org.au domain names
Allocation rules apply to the org.au namespace to determine the type of names an eligible registrant can register and how the names must relate to the registrant.
Organisations eligible to hold org.au domain names under the Licensing Rules (ie those which satisfy the ‘Not for Profit entity‘ definition) will have a wider range of org.au domain names they can register. These include org.au domain names which are matches or synonyms of the name of a service, program, event or activity the organisation provides at the time of the domain name application.
D. Changes affecting State and Territory namespaces
The Current Rules only allow State and Territory namespaces (eg. vic.au, nsw.au, sa.au and nt.au) to be registered by community groups and only Australian geographic names may be registered (eg bathurst.nsw.au). The Licensing Rules will open up these namespaces to allow State and Territory peak bodies to register.
A ‘Peak State or Territory body‘ is defined in the Licensing Rules to mean a not for profit entity that represents not for profit societies, associations or clubs established for one of the following purposes:
- community service (but not political or lobbying);
- the encouragement of art, literature or music; or
- the encouragement of animal racing or a game or a sport or recreational activity.
auDA clarified as examples that a peak Victorian body for sport and recreation is Football Federation Victoria, whereas a peak New South Wales body for community service organisations is Carers NSW. These entities would satisfy the above definition.
A peak State and Territory body can then apply for a domain name which is either, a match or acronym of its legal, business or statutory name, or a match of its trade mark.
E. Changes affecting id.au domain names
The id.au namespace is a dedicated namespace for individuals, whereas .com.au and .net.au namespaces are for commercial entities and .org.au for not-for-profit entities.
The Licensing Rules will restrict the types of names registrable in this namespace. Specifically, individuals can no longer register a name that refers to a personal interest or hobby in the namespace. Registrable id.au names must instead be either a match or acronym of the person’s name, or nickname of the person.
It should be noted that these changes are proposed to come into effect in late 2021, not 12 April like other discussed changes arising from the Licensing Rules. The precise date is yet to be confirmed by auDA.
Individuals holding hobby-related id.au domain names will no longer be able to renew the names once the changes come into effect. Interestingly, auDA recommends that if individuals still wish to hold a similar name, they should apply for priority to register the matching Second Level Name once these names are launched as any name can be registered within the second level .au namespace provided that they are not restricted by Australian law, and the registrant is able to satisfy the Australian Presence requirement.
Second Level Names update
The Second Level Names system was previously expected to be rolled out in the fourth quarter of 2020 but this had been delayed. auDA has since clarified that it now expects Second Level Names to launch in late 2021 and will announce the precise launch date well in advance.
Given the delays in implementing the system, auDA has also hinted at the possibility of changing the cut-off date for registrants to make priority applications for their Second Level Names.
Under the current version of the .au Namespace Implementation Rules, a priority registration process is proposed to allow existing registrants of .au domain names (eg forexample.net.au) to apply for priority to register the exact matches of their domain names at a second level (eg forexample.au) provided that the registered domain names were created:
- prior to a cut-off date decided by auDA (Category 1 Priority Status), initially proposed to be 4 February 2018; or
- between the cut-off date and prior to the launch date (Category 2 Priority Status).
It is not certain at this stage what the new cut-off date would be if changed, but noting the existing delays, it is not unreasonable to expect a later cut-off date to be set. If so, this will likely increase the number of registrants eligible to participate in the priority registration process.
Registrants of .au domain names should take note of the upcoming Licensing Rules and consider if they will be affected in any way. Foreign entities holding com.au and net.au domain names, and registrants of org.au domain names in particular should ensure they remain eligible to retain their domain name licences. Registrants who have arrangements with third parties regarding use of their .au domain names should be wary of the new prohibitions against licensing and leasing of domains and sub-domains.
Meanwhile, registrants and brand owners interested in Second Level Names can consider securing any relevant .com.au and .net.au domain names in the first instance to have the option of applying for priority for the corresponding Second Level Names. Further information on the proposed implementation for Second Level Names can also be found here.
Our Intellectual Property team has extensive experience assisting with .au domain name registrations including advising on the associated eligibility requirements and proposed implementation of Second Level Names. Please feel free to contact a member of our team if you need any assistance with your .au domain names or if you would like further information on the upcoming Licensing Rules and launch of Second Level Names.
This article was written by Luke Dale, Partner and Stephanie Leong, Solicitor.