.au direct domain names – Intellectual Property

Significant changes to domain names in Australia have been
introduced in that from 24 March 2022 it is possible to apply to
licence .au direct domain names (domain names directly followed by
.au, for example madderns.au) through .au Domain Administration
(auDA) accredited registrars. Previously, it was only possible to
licence third level .au domain names (eg com.au, net.au, org.au,
asn.au, id.au and edu.au). This change brings Australia into line
with similar developments in other countries such as New Zealand
(.nz), United Kingdom (.uk), France (.fr), Germany (.de), Canada
(.ca) and China (.cn).

Following the launch of .au direct on 24 March 2022, all names
in the .au registry prior to the launch will be reserved from being
registered as .au domain names for a six month period from 24 March
2022 to 20 September 2022, which is known as the Priority
Allocation Period. During the Priority Allocation Period,
registrants of an existing exact match domain name in the .au
registry (e.g. .com.au, .net.au and .org.au) prior to 24 March 2022
will be given the opportunity to apply for priority status to
register an equivalent new .au direct domain name.

Where there is only one registrant eligible to apply for an .au
direct name, it will be allocated to that registrant soon after it
is applied for.

However, in some cases, there will be competing claims to an .au
direct domain name. This will occur where different registrants
hold the same domain name in different .au namespaces (eg.
madderns.com.au and madderns.net.au) and both parties apply for a
corresponding .au direct domain name during the Priority Allocation
Period. In this situation, the contested name will be allocated
according to the priority category of the eligible applicants, as
summarised below:

• Category 1:
  

  • Domain name licences with a creation date on or before 4
    February 2018 (being the date that auDA first announced its
    intention to offer .au direct domain names and provide priority to
    existing domain names for the same name in different .au
    namespaces); and




• Category 2:
  

  • Domain name licences with a creation date after 4 February
    2018.

Once the priority category has been established, the following
principles will apply:

• Category 1 applicants will have priority over Category 2
  applicants;




• Where there are multiple Category 1 applicants, the contested
  name will be allocated based on agreement/negotiation between the
  eligible applicants or will remain on hold; and




• Where there are only Category 2 applicants, the contested name
  will be allocated to the applicant with the earliest creation date
  for the corresponding third level .au domain name.

As detailed above, the area of contention will be where there
are multiple Category 1 applicants. In that situation, the eligible
applicants for a reserved .au direct domain name will need to
resolve by negotiation who will be allocated the corresponding .au
direct domain name. Where no agreement is reached between the
eligible applicants, the contested name will remain on Priority
Hold until there is only one active application remaining.

If there are no applications for a reserved .au direct domain
name during the six month Priority Allocation Period, that .au
direct domain name will become publicly available on a first-come,
first-served basis at the close of the Priority Allocation Period
(ie after 20 September 2022) and can be registered through an auDA
accredited registrar.

To apply for an .au direct domain name, it will be necessary to
satisfy the ‘Australian presence’ test. This test is easily
satisfied by Australian citizens or permanent residents and
organisations, associations and businesses registered in Australia.
Foreign business entities are also able to meet the eligibility
criteria by holding an Australian Trade Mark for a mark that is an
exact match to the domain name for which registration is sought. If
applying for priority status, it is important to ensure that the
individual or entity applying for ownership of the .au domain is
the same as the registered owner of your corresponding third level
domain.

There is no obligation to apply to register the .au direct exact
match of your existing domain name. Provided the existing domain
name registration is kept up to date, it will continue to operate
as normal. However, the risk in not applying to register the .au
direct domain name during the six month Priority Allocation period
is that it may be acquired (after 20 September 2022 when the
Priority Allocation Period ends) by a third party (which may be a
competitor or other third party with adverse interests).

If you wish to secure the .au direct domain name that
corresponds to an existing domain name in the .au registry, it is
important that you apply for Priority Status by 20 September
2022.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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