Domain names

The right domain name for your business is an important part of your branding strategy. The Internet has extended global reach and made previously inaccessible markets available to your business. Your domain name is your online address on the global market, so make sure you do your research and choose wisely.

Your domain name is your Internet Protocol address (‘IP address’). An IP address is the unique identifying number used to identify your computer or other computer network interfaces. A domain name is used instead of a number to identify your computer as the numerical string is hard to remember. As your domain is your online address, its name should be recognisable as part of your brand so that your customers can find you.

A business name or company does not give you the corresponding right to licence the domain name. A registered domain name also does not give you trade mark rights, and the owner of a trade mark may be able to stop you using the domain name in some circumstances. You do not “own” your domain name but are given a licence to use the domain name for a certain period of time, under specified terms and conditions.

We have extensive experience in domain name issues and can assist you with:

• strategic domain name advice integrated with trade mark protection advice
• finding the right domain name to take your brand to the next level
• opportunities to grow your brand and domain name portfolio through the release of the new generic top-level domains (gTLDs)
• sale and purchase of domains including contract preparation, due diligence, locking of domains and the holding of payment in escrow
• domain name disputes and dispute resolution
• submission of complaints to the .au Domain Administration Ltd (auDA) under the Australian Domain Name Dispute Resolution Policy (auDRP)
• domain name dispute resolution under the Uniform Domain Name Dispute Resolution Policy (UDRP) and dispute administration by the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre.

Eligibility criteria and allocation rules

In Australia, domain name licences are allocated on a ‘first come, first served’ basis. The first person whose application is submitted to the registry will obtain the licence to use it, provided you satisfy the relevant eligibility and allocation rules.

To secure a .com.au domain name, you must prove you have a connection with Australia. In practice, this means the registrant must be:

• a company registered with the Australian Securities and Investments Commission (‘ASIC’);
• trading under a registered business name;
• an Australian partnership;
• a sole trader;
• a foreign company licensed to trade in Australia;
• the applicant for, or owner of, an Australian registered trade mark;
• an incorporated association; or
• an Australian commercial statutory body.

The allocation rules also require that the domain name have a connection to the registrant through being either an exact match, abbreviation or acronym of the registrant’s name or trade mark, or otherwise being “closely and substantially” connected to the registrant. For example, the name of a product or service that your business provides, an event or activity that your business arranges, a venue that your business operates or a profession that employees of the business practice.

The transferee of a domain name must ensure that the domain name is compliant with the eligibility and allocation criteria, as auDA reserves the right to revoke any domain name licence that is in breach of the policy rules.

Australian Domain Name Dispute Resolution Policy (auDRP)

The auDRP is a way to resolve domain name disputes without resorting to litigation. (It’s faster and more cost effective.) A complainant is entitled to complain about the registration or use of a domain name where:

• the domain name is identical or confusingly similar to a name trademark or service mark in which the complainant has rights; and
• the registrant has no rights or legitimate interests in respect of the domain name; and
• the domain name has been registered or subsequently used in bad faith.

The complainant must prove all of the above grounds to uphold the complaint. The complaint can be decided by either a one- or three-member panel. The commencement of administrative proceedings under this mechanism does not prevent either party from starting legal proceedings at any time during the process.

New generic top-level domains (gTLDs)

The root top-level generic domain names are .com (commercial), .net (originally used by internet services providers), .info (information sites) and .org (non-profit organisations and industry groups). The new gTLD program was initiated by the Internet Corporation for Assigned Names and Numbers (‘ICANN’) which regulates the Internet’s network of IP addresses. The new generic Top-Level Domain Program was developed to expand the domain name system (DNS) and promote competition, choice and innovation in the domain name space.

The new top level domains (TLDs) are a new type of TLD that will allow registrants to register more specific domain names which relate among others to various interests, businesses, communities and cities. There are hundreds of extensions to choose from, including .sydney, .melbourne, .tech, .club, .media, .design, .property and .science.

The delegated strings for the new gTLDS can be found on the ICANN website.

The new TLD .xyz has over 1 million registrants with Google choosing the domain www.abc.xyz. Larry Page writes the following line in a letter on the home page of .xyz domain: “Google is not a conventional company. We do not intend to become one.”

Trademark Clearinghouse Database (TMDB)

The Trademark Clearinghouse is a global database for registered trade marks. This is the first of its kind in the global domain space. On 30 September 2013, ICANN published the Rights Protection Mechanism (RPM) for the new GTLD registries. The Trademark Clearinghouse is the RPM that was set up by ICANN to allow brand owners to register their trade marks as domain names during a Sunrise Period for a TLD. The TMDB functions as a central database to provide information to registries to support claims during the Sunrise Period. By participating in the RPM, you are not guaranteed the domain name, but rather that you will have an early opportunity to obtain the domain name during the Sunrise Period.

Sunrise Period (Trade mark holder phase)

The Sunrise Period is the time at the launch of a new TLD and is a special period during which trade mark owners can preregister domain names on the basis of their ownership of a trade mark before the public domain registration for the TLD has started. The trade mark owner must be able to establish their prior right to the name. This gives brand and trade mark owners the opportunity to prequalify to register domain names to avoid their names being registered by cyber squatters. During this period, brand owners registered with the TMDB will be notified if anyone applies to register a domain name which is an exact match with their trade mark.

Landrush Period (Early access phase)

The period after is known as the ‘landrush period’ during which domain names are available for registration – usually to a closed group at a premium price. This gives non-trade mark owners the opportunity to register domain names prior to the General Availability stage. A sunrise period and landrush period are sometimes run concurrently and in the event of competing applications, an auction may be held between the competing applicants.

General availability (public access)

The ‘general availability’ period usually follows the ‘landrush period’. During this time, the domain name registration is open to anybody on a first come, first served basis.

With the expansion of domain names in the TLD Internet real estate, we can advise you on:

• the opportunities for expanding your domain name portfolio in the TLD space and positioning yourself globally on the world wide web
• whether you should consider protecting your brand through the Trademark Clearinghouse