If you have a website, read this: .au direct registration available soon

Second level .au domain names are expected to be available for registration from Q4 2019. Brand owners and current domain name registrants should all consider taking action to secure .au domain names, whether for direct use or for the purpose of preventing third parties from registering domain names that incorporate their brands.

In this article, we provide important information about the application process and eligibility criteria.

Background

Presently, legal persons with an Australian presence are able to register third level domain names such as example.com.au, example.net.au and example.org.au, provided they meet the eligibility criteria for each domain name. The policies for registration of these third level domain names are managed by the governing body of .au domain names, the .au Domain Administration (auDA).

In 2016, auDA approved the use of second level domain names in the .au namespace, otherwise known as direct registration. There have been delays in implementing the system, but on 31 May 2019, auDA confirmed it would proceed with permitting direct registration.

What does this mean?

The introduction of second level domain names in the .au namespace will have no impact on current registrants of third level domain names. If you are the registrant of example.com.au, you will maintain that registration.

However, it may now be possible for a person or entity with an Australian presence (for example, an Australian resident, a company registered under the Corporations Act 2001 (Cth) or an applicant or registrant for an Australian word trade mark) to obtain registration of example.au. Unlike .com.au and .net.au, there is no requirement that there must be some connection (e.g. a company name registration) with the chosen domain name. This means persons with an Australian presence can register any domain name at the second level, subject to the priority rules set out below and any relevant pre-existing third party rights.

Implementation rules

auDA recognises that many third and, where relevant, fourth level domain name registrants will want to hold the equivalent name at the second level. It has introduced rules which will govern the introduction of the second level domain names, as well as competing claims for names in the .au namespace, namely the “.au Namespace Implementation Rules” (Rules).

Key provisions of the Rules include:

1. Eligible domain names will be categorised as follows:
   • • • Priority Status (Category 1) – where the registered domain name licence (such as the licence for example.com.au) was created before the cut-off date (4 February 2018 has been suggested as the cut-off date);
       • Priority Status (Category 2) – where the registered domain name licence was created between the cut-off date (i.e. 4 February 2018) and prior to the commencement date (expected to be in Q4 2019); and
       • General Availability – where there is no registered domain name licence prior to the commencement date (expected to be in Q4 2019). General Availability domain names will be available on a first come, first served basis.
2. Where a single domain name has “Priority Status“, it will be reserved for registration by the registrant of that domain name (i.e. gadens.au will be reserved for the registrant of gadens.com.au). Reservation only applies to exact matches.
3. If there are multiple eligible domain name licences claiming “Priority Status” for the same domain name (e.g. the respective registrants of example.com.au and example.net.au) and these fall into different categories based on creation date, the domain name will be allocated exclusively to Category 1.
4. An application claiming “Priority Status” must be made to an accredited domain name registrar (e.g. GoDaddy, Netregistry, Planet Domain, etc) within 180 days of the commencement of the Rules (date to be confirmed). Please note this may be later for Category 2.
5. Once an application is made claiming “Priority Status“, a registrant will not be able to update registrant information and cannot transfer the domain name licence for the third level domain name (e.g. example.com.au) to another person during the application period. As stated above, the application period is likely to be 180 days from the commencement of the Rules.

Competing claims for a domain name

In short, an application claiming Priority Status (Category 1) will have priority over an application claiming Priority Status (Category 2). However, where no application is received for Category 1, the priority will default to Category 2. If no application is made, the .au domain name will be made available to the general public after the application period has concluded.

Category 1

Where there are multiple applications for a domain name claiming Priority Status (Category 1), the registrants will need to negotiate as to which party will be able to register the exact match in the .au namespace. If no agreement is reached, neither party will be entitled to use the direct registration for that domain name. However, it is a requirement that both parties continue to pay the annual application renewal fee for that domain name (this amount is yet to be decided). In the event one party fails to pay the annual application renewal fee or they no longer satisfy the eligibility or allocation criteria for holding the third level domain name, then the application will lapse and the other party will be able to claim the direct registration.

Category 2

On the other hand, if there are multiple applications claiming Priority Status (Category 2), the party with the earliest creation date will be entitled to register the exact .au match during the application period (1 May 2020 has been the suggested date). After this time, anyone will be able to register the second level domain name on a first come first served basis.

What should I do?

While the introduction of direct registrations does not change the existing domain name landscape, it does provide businesses and consumers with a new type of “shorter” domain name, which may be more marketable. Even if you do not wish to use a second level domain name, you should consider applying for priority status if it is available in order to prevent third parties from securing a domain name that may later cause consumer confusion or brand dilution.

We recommend taking the following steps:

• review your current domain name registrations and consider key domain names and brands you wish to protect;
• consider registering any relevant .com.au and .net.au domain names if you want the option of claiming priority status for a direct registration, provided that you are eligible to register that domain name (bearing in mind that if there are any existing registrations, the Rules will give these priority, but only if applications for the second level .au domain names are made by the registrants of those competing registrations);
• monitor the suggested dates and deadlines (noting the above dates are still to be confirmed and presently are only a guide), and monitor emails from your registry provider if you wish to claim priority for a direct registration; and
• consider if there will be any need to change registrant information for a domain name on which you intend to rely for a claim of priority during the application period (for example, changes arising from a restructure or an asset or business sale) and ensure any post application period obligations are dealt with appropriately in any agreements.

auDA has advised it will release further information about second level registrations in the coming weeks, including dates. Further information can be found here.

In the meantime, Gadens can provide further guidance or assistance on how to best approach the introduction of second level domain names to ensure key brands are protected.

Authored by:

Kerry Awerbuch, Partner

Madeleine McMaster, Lawyer