Australia: Three Important Developments In Relation To Domain Names Registrations

Currently there are a number of restrictions which have deterred Australian Trade Mark applicants or registered proprietors from registering .com.au and .net.au domain names. In particular, such restrictions include a limitation to one such domain name per individual or entity, and the requirement that the proposed domain name must "directly derive" from the name of an Australian trading entity (eg. a registered Australian business name or company name).

The .au Domain Administration ("auDA") Name Policy Advisory Panel recently handed down its Second Consultation Report setting out recommendations strongly in favour of removing a number of these restrictions and other important recommendations. Some of the key recommendations include:

• removing the artificial restriction of only one .com.au or .net.au domain name per person or entity:
• accepting Australian trade mark registrations and applications as a basis of registering .com.au and .net.au domain names;
• changing the requirement that the domain name "directly derive" from the legal name of the applicant to a less stringent requirement that there be "a substantial and close connection" between the domain name and the applicant’s legal name (or trade mark);
• adopting a mandatory Uniform Dispute Resolution Policy in terms substantially the same as the ICANN Uniform Dispute Resolution Policy.

The Names Policy Advisory Panel is expect to submit its final report to the auDA Board early next month. If the Panel’s recommendations are accepted, the above important changes are likely to come into force in the very near future.

In light of these anticipated important changes to the registration of .com.au and .net.au domain names, we strongly recommend that all Australian trade mark applicants and registered proprietors consider registering .com.au or (where applicable) .net.au domain names based on their Australian trade mark registrations or applications.

Even if a trade mark applicant or proprietor does not use a .com.au or .net.au domain name as its primary domain name address for its existing website, such a domain name may be used to direct Internet users to that website. It may also have the added advantage of preventing the registration of the relevant .com.au (or .net.au) domain name by an unauthorised third party.

We will report on further developments in further Special Newsletters. In the interim, please do not hesitate to contact us if you have any questions or if we can be of any assistance.

As reported in our March 2001 Newsletter, Internet Corporation for Assigned Names (ICANN) late last year announced that it will allow seven new domain name suffixed to enable more website variety, in particular, to relieve congestion in the crowded field of addressing ending in .com. The new top-level domain name suffixes are as follows:

• .biz for businesses and commercial purposes;
• .name for individuals;
• .pro for professionals;
• .info for general use;
• .museum for museums;
• .coop for business co-operatives;
• .aero for the aviation industry.

Of primary importance for trade mark proprietors (and trading entities) is the proposed new .biz Top Level Domain Name. According to recent announcements by ICANN, it is anticipated that ICANN will finalise its agreements with the certain of the proposed new Domain Name Registrars, including the .biz Registrar (NeuLevel) in the next few weeks. The pre-requisite steps for making the .biz domain name available to the public are expected to commence soon thereafter.

The .biz Top-Level Domain Names must be used or intended to be used primarily for bona fide business or commercial purposes and will be subject to the Uniform Dispute Resolution Policy of ICANN. Use or intended use of such .biz domain names exclusively for personal, non-commercial purposes or for the purposes of criticism (or otherwise expressing an opinion on products or services), shall not constitute "bona fide business or commercial use".

The Registrar, NeuLevel, has proposed a "daybreak" period (otherwise known as the "Start-Up Intellectual Property Notification period) of 40 days, starting 150 days before the "Commencement of Services" date. This "daybreak" period is designed to assist trade mark rights holders in protecting their rights against any unauthorised registrations. During this "daybreak" period, trade mark proprietors will be given the opportunity to and submit "Trade Mark Claim Forms".

There will be no restriction on the number of trade mark owners that may file Trade Mark Claim Forms for a given domain name. There will be a fee for lodging such forms (which is to be announced). There is no guarantee, however, that the trade mark owner who lodges a Trade Mark Claim Form will receive the desired domain name.

Application forms for the .biz domain name space will be accepted by the Registrar 110 days before the Commencement of Services date (and will close 15-30 days before the Commencement of Services Date).

The submission of a Trade Mark Claim Form does not create any special rights with respect to registering a particular .biz domain name. However, each application received by the Registry for the registration of a .biz domain name will be compared to the Trade Mark Claim Form Database. Any application for a .biz domain name by a third party that is identical to a domain name on the Trade Mark Claim Database of the Registry, will be put "on hold" and will be subject to a dispute resolution procedure (if it is not withdrawn).

Even if you do not intend to apply for the registration of a .biz domain name, it is important for trade mark proprietors to consider lodging Trade Mark Claim Forms during the "daybreak" period.

We would be happy to answer any inquiries you may have or to assist you in relation to the registration of .biz domain names and/or, in lodging Trade Mark Claim Forms.

In light of the above developments, and as a result of the increasing importance of registering, managing and protecting domain names as an essential part of clients’ e-commerce and intellectual property strategies, and the increasing requests and inquiries from clients, we have established a Domain Name Management Service. In particular this service will offer:

• the registration and management (including renewals) of Australian and New Zealand Second Level Domain Names, ie domain name with .au and .nz suffixes such as .com.au, .net.au, .co.nz and .net.nz;
• the registration and management of Top Level Domain Names (eg. .com, .net and proposed new Top Level Domain Names such as .biz);
• the registration and management of domain names in certain other Country Second Level Domain Name spaces;
• the recovery of domain names which have been registered by unauthorised third parties (ie "cybersquatters") through recognised dispute resolution procedures such as those of ICANN, or (if necessary) through litigation. Our associated law firm, Sprusons:Solicitors has already achieved a number of successful recoveries of such domain names through these procedures and has and continues to advise clients on effective domain name protection strategies.