Australian domain names – how eligibility rules may affect online gambling operators
Law firm Addisons explores how the new eligibility rules for certain Australian domain names might impact foreign operators trading in the country
On 12 April 2021, a new set of rules for the .au domain (the principal second level Australian domain) came into effect. The new rules include important changes which are designed to maintain and build trust and confidence in .au domain names.
To be eligible for any .au domain name, there is a long-standing rule that you must have a connection to Australia, known as an ‘Australian presence’. Being the holder of an Australian trademark registration or pending trademark application is a common way that foreign entities can meet the Australian presence test to register com.au or net.au domain names.
Under the new rules, if a foreign entity (such as an online gambling operator offering games to persons in Australia using a com.au or net.au domain) is using an Australian trademark to meet the Australian presence test, the com.au or net.au domain name needs to be an exact match of that registrant’s trademark.
This change is designed to increase trust in the com.au and net.au domains by making the connection between the domain name and the foreign owner of an Australian trademark clearer.
The new rules are going to make it more difficult for foreign entities to maintain their Australian com.au and/or net.au domain name licences. If this change applies, the owner will need to update the information relating to how it meets the Australian presence requirement for the domain name licence via its registrar.
Depending on the circumstances, this may be done by one of the following:
- Change the registrant of the domain name licence. For example, the name could be transferred to an Australian subsidiary (this requires a registrant transfer via its registrar);
- Register the foreign entity as a foreign corporation trading in Australia and obtain an Australian Registered Business Number (ARBN);
- Lodge an Australian trademark application that is an exact match to the domain name; or
- Register another domain name which is an exact match to a current Australian trademark registration or pending application.
Parties affected will need to assess which approach best suits their needs.
For example, many offshore gambling operators have registered and use .au domain names to provide online gambling services to persons present in Australia, in a manner viewed by the Australian regulator (the Australian Communications and Media Authority (ACMA)) as being in contravention of the Interactive Gambling Act 2001 (Cth) (IGA). However, these entities will be reluctant to increase their presence in Australia.
If this is the case, these entities should consider seeking trademark protection in Australia. It is important to note, however, that once registered, the owner will need to be able to demonstrate use of the trademark in Australia, or else the trademark will be vulnerable to removal due to non-use. Notwithstanding this, the Australian Trade Marks Act 1995 (Cth) effectively provides a three-year window before a trademark owner is required to commence any actual use of a trademark.
The other issue that foreign entities may encounter is that their desired domain name is already registered. In these circumstances, the foreign entity can seek to:
- Challenge the validity of the domain name registration if the holder does not satisfy the Australian presence requirement; or
- Seek to purchase the domain name.
Foreign entities should review their current Australian domain name licences to check the basis upon which the Australian presence test has been satisfied and to consider whether additional steps need to be taken to maintain their eligibility.
Jamie Nettleton heads the gambling law practice of Addisons. Both Australian and international businesses rely on his expertise to advise on all aspects of gambling operations, including the potential application of gambling law to innovative products and concepts, as well as their investments in gambling businesses.
Karen Anne Hayne advises some of the world’s best-known brand names, as well as iconic Australian brands on all facets of intellectual property matters. Her practice includes maintaining the integrity of her clients’ trademarks, as well as advising on their trademark portfolios, domain names, copyright issues as well as their intellectual property strategies and brand protection, piracy and infringement issues.
Alanna Wright is a member of Addisons Intellectual Property group. She specialises in the impact of IP on technologies and their application to e-commerce and the gambling sector.