Domain Names in Australia - How Participation Rules Can Affect Online Gambling Operators

On April 12, 2021, a new set of rules for the .au domain (the main Australian second-level domain) came into effect. The new rules include important changes that are designed to maintain and build trust in .au domain names.

To be eligible for any .au domain name, there is a longstanding rule that you must have an Australian connection, known as an "Australian Presence". Owning an Australian trademark registration or a pending trademark application is a common way foreign organizations can pass the Australian Presence Test to register com.au or net.au domain names.

Under the new rules, if a foreign entity (for example, an online gambling operator offering games to individuals in Australia using the com.au or net.au domain) uses an Australian trademark to comply with the Australian presence test, com.au or the net.au domain name must exactly match the trademark of the registrant.

This change is intended to increase the credibility of the com.au and net.au domains by making the association between a domain name and the foreign owner of an Australian trademark clearer.

The new rules will make it harder for foreign entities to retain their Australian licenses for the com.au and/or net.au domain name. If this change is applicable, the owner will need to update their compliance with the Australian presence requirements for a domain name license through their registrar.

Depending on the circumstances, this can be done in one of the following ways:

1. Change the license registrant to a domain name. For example, a name may be transferred to a subsidiary in Australia (this requires the transfer of a registrant through its registrar);
2. Register the foreign entity as a foreign corporation trading in Australia and obtain an Australian registration number (ARBN);
3. Apply for a trademark registration in Australia that fully matches the domain name; or
4. Register another domain name that exactly matches your current Australian trademark registration or pending application.

Affected parties will need to evaluate which approach best suits their needs.

For example, many offshore gambling operators have registered and are using .au domain names to provide online gambling services to individuals located in Australia, which is considered by the Australian regulator (Australian Communications and Media Authority (ACMA)) to be contrary to the Online Gambling Act. 2001 Games (Cth) (IGA). However, these organizations will not want to increase their presence in Australia.

In this case, these organizations should consider applying for trademark protection in Australia. However, it is important to note 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. Despite this, the Australian Trademarks Act 1995 (Cth) effectively provides a three-year period before the trademark owner has to begin any actual use of the trademark.

Another problem that foreign organizations may face is that the desired domain name is already registered. In these circumstances, a foreign legal entity may seek:

1. Challenge the validity of a domain name registration if the owner does not meet the requirements to be present in Australia; or
2. Try to get a domain name.

Foreign entities should review their current Australian domain name licenses to review the basis on which the Australian Presence Test was conducted and to consider whether additional steps need to be taken to maintain their eligibility.

Jamie Nettleton leads the gambling legal practice at Addisons. Both Australian and international companies rely on his expertise in advising on all aspects of gambling, including the possible application of gambling law to innovative products and concepts, as well as their investments in the gambling business.

Karen Ann Hein advises some of the world's most famous brands as well as iconic Australian brands on all aspects of intellectual property. 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 the Addisons intellectual property group. She specializes in the impact of intellectual property on technology and its applications in the e-commerce and gambling sector.