The “.au” domain is here! This is not directly relevant to tax, but anyone with a domain name, needs to act, to avoid an unrelated party effectively stealing your business name. I can best demonstrate this, by giving this website as an example. It is currently ‘taxtechnical.com.au’ but it will become ‘taxtechnical.au’. Unless I register this new shorter domain name, by 20 September 2022, any member of the public can register the ‘taxtechnical.au’ domain name, creating at least confusion, and probably harm to this business. Any person with an existing domain name, has priority, over the general public, to register their existing domain name, with the shorter suffix. But this ‘Priority Application Period’ runs only until 20 September 2022.
Addressing this, in the Tax Institute’s TaxVine email (#30 of 19.8.22), Michelle Dowdle, Principal Lawyer, at Sladen Legal, wrote the following lead article.
Anything that you see on the internet, irrespective of whether it is an online store, employee portal, customer forum or article, has a unique address. This address falls under a domain name. Domain name registrations are not just an administrative or record-keeping task for a business — they are an essential tool when it comes to carving out an exclusive identity online. Ownership of key domains can ensure customers are transacting with an authentic trader and helps prevent unauthorised third parties from capitalising on a business’ valuable reputation. Maintaining a suite of domain names also enables a website to have improved search engine rankings, consistent branding and establishes a business identity in a global online trading environment.
Businesses will have no doubt encountered some of the different third level domain (3LD) options already available for domains in Australia — including ‘com’, ‘net’, ‘gov’, ‘org’ . A domain name ending in “.au”, indicates that the people or company operating the site has a business presence or connection with Australia. Soon we will have a new, snappier namespace, available at the second level (2LD) of the domain name with only the ‘au’ identifier. It is essential that traders identify whether they are eligible and take steps to secure this asset in the current priority period. Tax Institute members and stakeholders would be easily confused if, for example, some unrelated person registered ‘taxinstitute.au’. The same goes for customers or clients of business, professional services firms and, more broadly, those dealing with any organisation.
Eligibility for priority access to the .au domain
The .au domain is in high demand, so it is vital that Australian businesses take the necessary steps as soon as possible to place themselves at the top of the queue. According to data published by the Australian Domain Administration (auDA), more than 3.5 million .au domains are already reserved as at August 2022.
A business can reserve an “.au” domain, if it already has a 3LD .au domain name registered. The existing 3LD .au domain name must have been registered before 24 March 2022 to qualify for priority status. auDA will reserve an equivalent domain name for existing registrants, provided the existing registered domain complies with eligibility requirements.
Businesses have until 20 September 2022 to apply for priority status of the exact .au match of an existing 3LD .au domain name registration. Under the priority process, names that are exact matches will be put on ‘priority hold’ to prevent them from being registered by others. The purpose of this is to give existing registrants the ability to register their priority status of the exact match. This priority holding period ends on 20 September 2022.
If no one applies for priority status, the available .au domain names are released from priority hold on 3 October 2022, after which anyone from the public can seek registration through an accredited registrar.
What if there is contested ownership of a .au domain?
It is possible there may be more than one priority applicant for the same domain name, especially when different registrants hold the same domain name licence in different namespaces. If both of the earlier domains were created before 24 March 2022, then both registrants are eligible for priority status of the equivalent.
If both businesses were to apply, the direct exact match will be allocated a priority category based on when the domain name was registered. The categories are:
- Priority Category 1: Domain names registered on or before 4 February 2018
- Priority Category 2: Domain names registered after 4 February 2018.
The Priority Category system will operate as follows:
- A Category 1 applicant will have priority over Category 2 applicants;
- If there are multiple Category 1 applicants, the applicants will need to reach an agreement among themselves on who is allocated the .au direct name; and
- If there are multiple Category 2 applicants, the applicant with the earliest domain name registration date will be allocated the .au direct name.
A contested name is allocated once the contention is resolved — the process and timing of which will vary from dispute to dispute.
The interrelationship between business names and trade marks
Notwithstanding the importance of securing a domain name for online visibility, it is important to note that registering a domain name and the equivalent business name with ASIC does not provide exclusive rights to use the name or something similar. Taking out these registrations helps customers find, identify, and connect with the business, and in relation to business names, to meet compliance obligations — but neither registration confers the right to stop anyone else from trading under the same name or something similar. This is one of the great myths relating to domain names and business names. Although important business assets, domains and business name registrations do not provide the owner with any protection from infringing the rights of someone else if a similar name is already in use or has been registered as a trade mark.
The only way a business can effectively protect its domain name and business name assets is to register the name as a trade mark with IP Australia. A registered trade mark provides the owner with exclusive rights over the name and also places the business in the best position to enforce its rights against others that impede on their exclusive rights. Having a pending or registered trade mark can also assist in getting a domain name registered in the .au space as it is one of the eligibility criteria.
Both domain names and registered trade marks are important assets to secure exclusive rights in the online space. Registering a domain name is easy and is a simple step to minimise online competitive practices by a third party and avoid having to take action against cyber squatters which can be time-consuming, costly and frustrating.
Calls for urgent action
In an article in the Australian Financial Review on 12 August 2022, the Australian Small Business and Family Enterprise Ombudsman, Bruce Billson, urged small business owners to safeguard their brand and prevent impersonators from ambushing websites and masquerading as the business by registering domain names similar to that of the business.
Mr Billson has also called on auDA to extend the Priority Application Period for a further 12 months, to September 2023, due to low awareness of the issue. Given no announcement to extend the period has been made yet, prudent businesses will act sooner rather than delay and hope that an extension will eventuate.
More information on .au domains can be found on the auDA website.
[Tax Month – August 2022 – Previous Month, 28.8.22]