Domain Names – Important changes coming this month (March)!
Posted on March 02, 2022
Domain names are a key part of the IP of a business. This is reflected in the amounts for which some clearly valuable domain names have changed hands – eg. voice.com (US$30 million), 360.com (US$17 million) and sex.com (US$13 million).
Changes are coming for domain names in Australia.
Suppose you are a construction company trading as ‘bobthebuilder.com’ or ‘bobthebuilder.com.au’. You will now be able to register ‘bobthebuilder.au’ as a newly introduced ‘direct domain name’.
You have to have a verifiable connection to Australia. There will also be plenty of competing claims, and the priority rules are not straightforward (see below).
Years ago, domain names were a big deal. There were many high-stakes cyber-squatting disputes. Even though you may have ‘bobthebuilder.com.au’, a third party may have acquired ‘bobthebuilder.com’ and be willing to sell it to you only if you offered them serious money.
There is of course a Uniform Domain Name Dispute Resolution Policy (UDRP), with its own rules and established principles where entitlement to a ‘.com’ domain name is disputed. For.com.au domains, the rules are different.
Fast forward to 2022. Potential customers are now unlikely to type ‘bobthebuilder.com’ into a search bar. They will rather simply Google it, and take it from there.
But domain names are still important. Just ask businesses like owners of unfortunate, unintentionally inappropriate real-life domain names Therapist Finder (therapistfinder.com), Speed of Art (speedofart.com), or Powergen Italia (powergenitalia.com).
The new, direct domain names are being offered from 24 March 2022. The process is being handled by US corporation Afilias, the world’s second largest internet domain name registry. They will also license sales by domain name resellers (eg. GoDaddy).
As with the early days of domain names, there will be disputes where there are different registrants with the same name in different spaces. These are ‘contested names’. The rule to be applied will be whichever entity first created the relevant name (eg. Bob the Builder). However, if both rivals created their respective names before the cut off date of 4 February 2018, then the principle will be that the parties have to resolve the competing claims between themselves. If no agreement can be reached, the name is subject to a ‘Priority Hold’, and remains so until there is only one active application remaining.
For established businesses happily using the .com or .com.au domain names, they will still be well advised to seek registration of a ‘.au’ direct domain name. Otherwise, the business risks the new domain name being acquired by a rival company, or a disgruntled ex-employee or ex-customer.
Competing priority claims may of course arise innocently. Consider the sheer number of three letter acronyms which are incorporated into domain names (eg. abc.net.au). Also consider (to take a simple example) who would be better entitled to the domain name scotch.au between –
- Scotch College Melbourne (scotch.vic.edu.au), and
- Scotch College Adelaide (scotch.sa.edu.au)?
In fact, these two schools may well be connected, but even so, which has the better entitlement to the new ‘direct’ domain name?
We often advise clients on domain names as part of their IP strategy, both defensively and offensively. Please come and talk to us if you need help.