.com.au and .net.au domains : tightening of the rules governing trademark-based eligibility
Currently, a company established oustide of Australia can register a .com.au or .net.au domain based on an australian trademark, provided the domain is identical or very similar (eg. Abbreviation) to the corresponding trademark.
However, new eligibility rules will take effect on 12 april 2021. Paragraph 2.4.5 of the new rules (auda.org.au) states that in case of a domain name registration based on an Australian Trademark, the domain name must be an ”exact match to the words which are the subject matter of the Australian Trade Mark”. More information on change of rules from the Australian registry can be found on the website of the Australian registry (auda.org.au).
The domain names already registered and expiring after April 12, 2021 will be subject to the former rules until their renewal date and will become subject to the new rules upon renewal. This change of rules may have serious consequences in some cases, as it can disrupt the services associated with actively used domain names, should these domains be barred from renewal.
As a consequence, the holders of domain names not complying with the new rules will need to either change the registrant of these domains to the benefit of an Australian company (eg. a local subsidiary) or file an identical Australian trademark, in order to be able to renew them.
Our clients holding .com.au and .net.au domains impacted by this change have already been individually notified of the new rules.
The IP Twins team is available to assist you in the management of your domain name portfolio. Do not hesitate to contact your dedicated account manager for any further information on this issue.