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LEGAL CLINIC: The domain name game

LEGAL CLINIC: The domain name game

The rules for allocating .com.au domain names specify that each organisation is only permitted to have one .com.au domain name, and that name should be the name of the company or business, or a contraction of that name. The usual practice for any company wishing to obtain the domain name for one of its trademarks is to register that trademark as a business name, and then apply for the domain name under the business name.

This could prove a dangerous practice because any person registering a business name without the intention to trade, or who fails to notify the Department of Fair Trading that they have ceased to trade under a business name, is guilty of an offence under the Business Names Act 1962. This offence can result in very significant fines and the cancellation of the business name.

Thankfully, common sense appears to have prevailed and an advisory panel of AUDA (Australian Domain Name Authority) has recommended significant changes to the rules for registration of the .com.au domains. Firstly, trademarks can now be used as a basis for registering a domain name. Secondly, an entity can have as many domain names as it likes and thirdly, the contraction rules are being relaxed.

The contraction rules are the rules that determine the domain names available to the holder of a corporate name or business name (and soon a trademark).

Currently, a valid domain name for Widget Pty Ltd could be wid.com.au, widgt.com or even wet.com. Mixing up the order of the characters ie wed.com, is not allowed. This has led to the potential for some strange results that have compromised the intent of this rule. As you can see from the previous example, Widget Pty Ltd could also get the domain name get.com.au, which would have no relationship to the original name of the business, but may be commercially valuable.

To overcome this, AUDA is recommending a more subjective rule under which there merely has to be a close relationship between the name of the organisation or trademark and the domain name. Although it will be harder to administer, it will probably result in more logical outcomes, but this will depend to a large extent on what rules are put around this proposal when it is actually implemented.

So, what does all this mean to resellers? Firstly, it means that you should be looking to register your trademark searches as quickly as possible, or if you are using a mark under licence from an overseas supplier, ensure the supplier registers these marks on your behalf. In most cases this will already have been done.

Secondly, you should be prepared for a crackdown from the various state business name registration authorities. My suspicion is that once the anomaly with the .com.au domain names is resolved, these authorities may well audit existing business names to see whether these businesses are actually trading. If you have any business names that are not actually trading, the various authorities should be notified in accordance with the legislation.

Thirdly, you should work out what domain names you may want and be ready to move as soon as the changes come through. This may, however, take some time because the changes are still to be approved by the AUDA Board.

The other news on the domain-name front is that the AUDA is also considering whether to implement additional domain spaces such as those recently proposed for the .com domain space. These would include names such as .pro.au for professional organisations, .bus.au for businesses, .name.au for individuals .coop for cooperatives. This however appears to be a long way off, so all you can do is . . . Watch This Space.

Colin Goldrick is a senior associate with griffith hack lawyers. Contact him on colin.goldrick@griffithhack.com.au


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