Australian brand owners can still rely upon some strong protections for their online brand.
In good news for trade mark owners, after being recently reviewed, the strict rules governing the ".au" domain name space are largely to remain unchanged. Nevertheless, brand owners should remain ever vigilant for domain names which have been registered with a view to free-riding on or tarnishing their brands in the online world.
Names Policy Panel and Secondary Market Working Group Reports
The policy authority and industry self-regulatory body for the ".au" domain space is .au Domain Administration Ltd (auDA). In 2010, the auDA Board established the 2010 Names Policy Panel to review the policy framework underlying the allocation and use of domain names in the ".au" domain space. In addition, the Secondary Market Working Group was established to examine the sale and transfer of ".au" domain names after allocation.
Those bodies have now concluded their investigations, and have made various recommendations.
Some of the recommendations were accepted, while others were merely noted pending further investigation. The accepted recommendations will be implemented in the coming months.
Domain names that are misspellings remain prohibited
In the ".com" space, people often use slight misspellings in order to lure visitors to a website, either to generate advertising revenue or to record hits with a view to selling the domain name to the owner of the real brand. This is often referred to as "typo-squatting". An actual example at the time of writing is "reeebok.com".
To help prevent this occurring with Australian domain names, auDA's policy prohibits the registration of domain names that are misspellings of entity, personal or brand names. The prohibited domain names are set out in a list, which currently contains around 2,000 misspelt words.
The Panel recommended, and the Board accepted, that the misspellings policy should remain in its current form.
This is good news for trade mark owners who often need to commence dispute resolution proceedings to have ".com" domain names which are deliberate misspellings of their trade mark or brand name transferred to them. In the ".au" context, the misspellings policy means such steps will usually be unnecessary.
An Australian connection is still required for owners
Only entities that are Australian (or registered to trade in Australia) are permitted to obtain domain name licences for ".au" domain names. The Panel recommended, and the Board accepted, that this requirement should remain in place.
Restrictions maintained on ownership of ".org.au" and ".asn.au" domain names
Not all entities may obtain a licence for ".org.au" and ".asn.au" domain names. To qualify for these domain names, an entity must be an incorporated association, non-profit Australian registered company, registered charity, registered political party or trade union. In 2004, this was extended so that "special interest clubs" could also register these domain names.
However, after considering this issue, the Panel considered that the "special interest club" loophole is being exploited for commercial gain, contrary to the purpose and philosophy of ".org.au" and ".asn.au" domain names. To prevent this, the Panel recommended, and the Board accepted, that the "special interest club" eligibility criteria should be clarified.
".id.au" domain names
There are similar restrictions concerning ".id.au" domain names. Only individual persons who are an Australian citizen or an Australian resident are eligible. In addition, to obtain a specified ".id.au" domain name, the domain name must be:
- an exact match, abbreviation or acronym of the registrant's personal name; or
- otherwise closely and substantially connected to the registrant, because the domain name includes, or is derived from, the registrant's personal name, or is a name by which the registrant is commonly known (ie. a nickname).
The Panel recommended, and the Board accepted, that individuals should also be permitted to register domain names which relate to their personal hobbies and interests (for example "johncitizenflyingenthusiast.id.au").
Mandated registrant transfer process and removal of six month delay before transfer
The Working Group found that the process of transferring domain names from one owner to another was not well understood by the public. For example, most people wrongly believe that domain names must be transferred using the existing registrar. A mandated process for transfer, with a well publicised policy setting out explanations and instructions, was therefore recommended.
The Working Group also recommended that auDA remove the current requirement that the owner of a domain name must hold it for six months before it can be transferred to another person. auDA has accepted these recommendations and indicated that the changes will be implemented in the next few months.
Recommendations pending further investigation
Alternative length licence periods
At present, a domain name licence must be renewed every two years. However, the Panel has recommended that registrants should be able to obtain a licence to a domain name for a 1, 2, 3, 4 or 5 year period.
Single character domain names
Under the current rules, it is not possible to register single character domain names. Although the Panel noted that it would be difficult to determine whether an applicant is eligible for single character domain names, the Panel recommended that, in the absence of any compelling technical or policy reason to maintain the restriction, single character domain names should be made available. This would be a welcome development for businesses that already have significant reputations associated with single character brands, for example, the telecommunications brand "3".
What brand owners should do
The (relatively) strict rules which apply to ".au"
domain names make it harder for cyber-squatters, typo-squatters and
others to free-ride or tarnish your brand in the online world by
registering offending domain names. Yet despite the best of
intentions, there is still a significant risk that ".au"
domain name applications will slip through the cracks, resulting in
the registration of a ".au"
domain name which could divert custom away from your business or tarnish your business' reputation.
However, the auDA (like all other official domain name bodies) has a dispute resolution policy through which successful complainants can have an offending domain name transferred to them. This is a far cheaper and often quicker option than initiating court proceedings and if successful, the remedy (which is either cancellation of the offending domain name or transfer to the complainant) is implemented directly by the registrar.
Brand owners should always act as soon as they become aware of a domain name which they consider to be a problem (whether it be in the ".au" or any other international space). The longer the offending domain name is active, the less likely that domain name dispute resolution proceedings will be successful, and the more likely it is that the offending website will have a negative effect on the brand and business.
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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this bulletin. Persons listed may not be admitted in all states and territories.