It‘s well known the .au country code Top-Level Domain is Australia’s home on the Internet.
The effective regulation and registration policy reforms implemented by the .au Domain Administration (auDA) more than 10 years ago have helped to make .au a trusted and secure namespace for both registrants and Internet users.
This is especially true for trademark holders who take comfort from the fact that their marks are protected under .au policy.
This is not the case in some national country codes or generic Top-Level Domains such as .com, .net or .org. For instance, there are no pre-conditions for registering domain names in .com or .net, meaning anyone may register a name that is similar or identical to an Australian registered trademark. This has caused significant grief to many trademark holders.
However, in .com.au and .net.au, domain names must exactly match or be an acronym or abbreviation of the registrant’s company or trading name, organisation or association name or trademark, or be otherwise closely and substantially connected to the registrant.
This policy is designed to prevent trademark abuse and protect companies from rampant cybersquatting.
As we head into 2013, there are currently more than 2.5 million .au domain names registered and that number continues to grow by around 60,000 every month. Since 2002, we’ve seen a 600 percent increase in registrations and it’s truly remarkable to witness this continued growth over so many years.
This growth is a real testament to the effective management and policy of the .au namespace and its ability to cater to the needs of trademark holders.
However, one area of .au policy that has sometimes attracted confusion is the general misconception that only Australian businesses can register a .com.au domain name. There have also been questions raised about trademark protection for foreign companies in the .com.au namespace.
In an attempt to clear the air on these issues, below is a brief summary looking at foreign ownership of .au domain names and how foreign companies can protect their trademarks in a quick and easy way.
Foreign ownership and trademark protection of .com.au domain names
According to .au policies outlined by auDA, any business with an Australian registered trademark or foreign company which is licensed to trade in Australia is allowed to register .com.au domain names via an accredited .au registrar.
Simply put, foreign companies can register .com.au domain names so long as they possess an Australian registered trademark or have applied for one. However, foreign entities should not fret; if your trademark is not yet registered in Australia, a trademark filing number is sufficient to register a .au domain name and it is neither hard nor expensive to attain this.
Thanks to the Madrid System for International Registration of Marks, a trademark owner is offered the possibility to have a trademark protected in several countries within the Madrid Union of countries by simply filing one application directly with their own national or regional trademark office, or designating further countries subsequently. The Madrid System has been around for over a century and functions under the original 1891 Madrid Agreement and the more recent 1989 Madrid Protocol.
Having signed the Madrid Protocol, Australia is a member of the Madrid Union and so enjoys the benefits of the system. The list of members of the Madrid Union can be found here: http://www.wipo.int/treaties/en/documents/pdf/madrid_marks.pdf.
As a member, a foreign trademark owner can designate Australia in their international applications, provided the trademark is registered in a country that is part of the Madrid Union.
From here, the process is straightforward and easy to follow. WIPO (World Intellectual Property Organization) provides an International Application Simulator which demonstrates how to use the system to seek trademark protection abroad, as well as an online Fee Calculator.
If your trademark is registered in a country which is not yet a member of the Madrid Union, and you are unable to take advantage of the Madrid System, you can always seek to register your trademark in Australia by directly applying with IP Australia, the Australian Government agency that administers intellectual property rights.
As you can see, the process for foreign ownership and trademark protection of .com.au domain names is relatively simple. Once a trademark is registered or is pending registration, brand owners are then eligible to protect their trademark names in .com.au.
If you wish to register a .au domain name, please visit one of the .au accredited registrars which can be found here: http://ausregistry.com.au/registrars