Latest Developments in Domain Name Registration

To be eligible to hold an Australian domain name, a registrant must meet the Australian presence requirement. Historically, this requirement was frequently met by choosing a domain name that was ‘closely and substantially connected’ to a registered Australian trade mark or application. A registrant could choose an exact match, an abbreviation or acronym of its registered mark.

The New Rules will limit the scope of this test so that new registrants, and registrants renewing existing applications, may only rely on it if the domain name is an exact match of the words subject of their trade marks. The definition of ‘exact match’ has been tightened under the New 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.

While the Australian presence requirement applies to all registrants seeking an Australian domain name, this change will impact foreign entities in particular, as they often seek to use the Australian trade mark method to hold ‘com.au’ and ‘net.au’ domain names.

Registrants for domain names that do not exactly match the subject of an Australian trade mark will need to consider alternative ways to demonstrate an Australian presence, for example by incorporation or registration of the registrant in Australia (see rule 1.4 of the rules).

The New Rules have introduced a new related body corporate rule which enable a company to apply for and hold Australian domain names on behalf of another company within its corporate group. However, the related company, on whose behalf the domain name is held, must itself meet the Australian presence requirement.

‘com.au’ and ‘net.au’ domain names are only available to commercial entities.  The New Rules also expand definition of ‘commercial entity’ by widening the types of entities eligible to register such domain names.  Commonwealth entities, statutory bodies, incorporated limited partnerships under State or Territory legislation, trading co-operatives and the government are now considered ‘commercial entities’ eligible to registe

While the New Rules may not have significant impact for many local registrants, securing a domain name that is an exact match of a business’s registered trade mark is becoming increasingly valuable. It can help maximise brand awareness whilst also reducing the risk of third parties claiming against a business for trade mark infringement by operation of its domain name.

Section 120 of the Trade Marks Act 1995 provides that a person infringes a trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

The case law surrounding trade mark infringement and domain names suggests that more than mere registration is required to constitute use of a trade mark.[1] However, the combination of a registered domain name, linked to a website which contains advertising material that promotes goods or services in relation to which the trade mark is registered, could constitute infringement under section 120.[2] Registrants should complete their due diligence when making an application to license a domain name. If the registrant does not have a registered mark, they should search the Australian Trade Mark Register (available through IP Australia) to ensure they are not infringing any third party registered marks.

Conversely, if the holder of a registered trade mark is concerned that a particular domain name and its use amounts to an infringement, it should raise a complaint with the Registrar of Record. Failing a resolution with the Registrar of Record, the registered trade mark owner can lodge a complaint directly with auDA.  Under auDRP clause 4(a) there are three elements a complainant must establish for a domain name to be cancelled or transferred. These requirements are:

• the domain name must be identical with or confusingly similar with the trade mark of the complainant;
• the registrant has no right or legitimate interest in the domain name; and
• the domain name must be registered and used in bad faith.

Registrants of Australian domain names should take note of the New Rules and consider if they will be affected in any way. In particular, foreign entities should ensure they remain eligible to retain their domain name by satisfying the Australian presence test.

If you require intellectual property law advice or further information in relation to domain names, or any other issue regarding your trade mark rights, please do not hesitate to contact us.

[1] Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 at [153].

[2] Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 267 ALR 347 at [50].

This article was co-written by Lawyer, Madeline Tait.