.au Domain Name Registration: Trademarks = ‘Presence’ In Australia?

auDA is presently reviewing its licensing rules for domain name registration. One important change is that simply owning (or having applied for) a registered Australian trade mark may soon be enough to qualify you for the ‘presence’ test.

Previously, one needed some form of legal personality present in Australia to register a “.au” domain.

If the new draft rules are accepted, it will be sufficient to own (or have applied for) a registered trade mark. Australian presence would then be defined to include:

(17) an Australian Trademark application or registration in circumstances where a Person does not meet any other Australian Presence requirements but who has applied for or registered a word mark under the Trade Marks Act 1995 (Cth), and who thereby may apply to register a domain name that is an exact match of the word mark applied for or registered.

However, the new auDA licensing rules also include the following restrictions:

• the trademark registered or applied for must be or include a word mark
• the domain name applied for must be an exact match of that word mark
• an exact match does allow you to exlude:

• • any corporate identifiers (eg Inc, Pty Ltd, LLC)
  • definite and indefinite articles such as ‘the’, ‘and’, ‘of’
  • DNS identifiers such as ‘com.au’, ‘com’, etcetera

So, once the new .au licensing rules come into effect, auDA will consider only the ‘word’ part of the trade mark when deciding whether it’s sufficient to to satisfy the Australian presence rule.

The changes will apply to names created or renewed after the new licensing rules come into effect. According to auDA, this will happen after the present consultation period has concluded.