Will you lose your domain name under the new auDA rule?
You think you own your domain name…think again!
Whether you registered your business name a decade a go, or last week, there are some new changes coming which will affect many .com.au domain holders, and could potentially see them lose their domains under the new rulings set out by Australia’s domain authority, auDA.
To protect business owners and domain holders, all domain names will now need to meet the Australian presence test.
What is the Australian Presence Requirement?
From the 12th of April 2021, to hold any au TLD (Top Level Domain), you’ll need to pass the presence test, which is by ensuring you have a current trademark or pending trade mark application that appears on the IP Australia’s Trade Mark database.
If your name is not an exact match of the words in the trademark, you will be ineligible to hold that .com.au or .net.au domain name, so for example, if your business trademark is Bob’s Big Fish, then your domain can only be bobsbigfish.com.au
Bobsfish.com.au or bobsfishstore.com.au won’t cut it.
The domain must include ALL the words in the same order as the trademark to qualify.
In short, this means that if your .com.au or .net.au domain name isn’t an exact match for your trademark, then you may lose your domain name, or you should reconsider registering a new trademark that is an exact match for your domain name.
And for those businesses that don’t have a trademark at all, it’s recommended you seriously consider getting the process going, or consider changing your business name!
Why is a trademark so important for a business?
A business without a trademark is an open invitation for someone to come along and trademark your business name, and you could find yourself suddenly infringing on someone else’s trademark, regardless of if you have been using the registered business name for 20 years.
Failing to spend the $250 for a 10 year single-class trademark could essentially cost you your entire business, or in the very least, possibly your domain name.
Interestingly only around 50% of all Australian businesses actually have a trademark for their business name or brand.
Many business owners assume that just because they have the business name ‘registered’ it protects them, however if someone else trademarks the same name, ultimately they have exclusive rights to that business name, and ultimately the domain name. Now, it is possible for two businesses with the same name to co-exist in business, providing they offer different services.
For example if one was called ‘Dales Candy Bar’ and one was ‘Dales Cleaning Services’ with the same initial name then there is little chance of any confusion as the end words differentiate them, and therefore both could be registered or trademarked. And this is why the new auDA ruling will help to further assist in preventing any confusion, by ensuring the full trademarked name is the domain. However if you had registered just ‘Dales’ then it would be a matter of ensuring you claimed the dales.com.au domain name first to ensure it is yours.
And now with the new ruling, technically if someone owned dales.com.au and did not have an exact-match trademark then you could dispute this, and auDA would make the consideration on how best to allocate that domain name.
So what does this mean for those that have stockpiled .com.au domain names in the hope of selling them?
You’ll either need to sell them quickly to anyone with the exact-match trademark, register the trademark yourself and transfer the details of the domain name to the trademark, or end up losing your domain names.
How can I avoid losing my domain name if I have no trademark?
There is a short term option that may help you hold onto your domain name. Providing you renew your domain name before the 12th April date that the rule comes into effect, you can continue using the domain name until the following renewal date.So if you renew your domain name for 4 years or even longer, then you get some breathing space. However, keep in mind that eventually you will most likely need to trademark your name to keep it indefinitely, and the sooner you do it the better in case someone else registered your trademark and you lose the business name and the domain name!
The golden rule is that if you are in business you need a trademark to protect your brand.
So with less than a month before the new auDA ruling kicks in, it is recommended business owners get themselves prepared, ensure your trademark is current and an exact match, or start looking into alternatives that you can trademark and register or potentially find yourself without a website.
For the full details of how this might affect your business, visit the auDA website for details:
Alternatively, visit IP Australia and register your trademark.