Foreign Companies: How to Register an Australian Domain Name Using a Trade Mark

Foreign businesses can register Australian domain names, including .com.au and .au, without establishing an Australian company or obtaining an Australian Business Number (ABN). An Australian trade mark application or registration can provide a straightforward way to satisfy the eligibility requirements.

For international businesses entering the Australian market, this is a practical and cost-effective way to establish an online presence and protect their brand identity.

Can a Foreign Company Register a '.com.au' Domain Name Without an ABN?

Yes. Australian domain names are regulated by .au Domain Administration (auDA), which requires applicants to satisfy an Australian Presence requirement.

Australian companies commonly satisfy this requirement through their corporate registration or ABN. However, foreign businesses may also qualify by relying on an Australian trade mark application or registration.

This means that an overseas company can potentially register a .com.au, .net.au or .au domain name without establishing an Australian subsidiary or obtaining an ABN solely for that purpose.

For example, a French company planning to launch its products in Australia could apply to register its brand as an Australian trade mark and use that application to establish eligibility for a corresponding Australian domain name.

However, where an Australian trade mark is the basis for establishing Australian Presence, specific restrictions apply to the domain name that can be registered.

Does the Domain Name Need to Match the Australian Trade Mark?

Yes. Where a foreign business relies on an Australian trade mark to establish Australian Presence, the requested domain name must be an exact match of the words forming the trade mark, subject to certain permitted exclusions.

Under auDA’s Licensing Rules, elements such as spaces, punctuation and certain articles may be disregarded when assessing whether a domain name is an exact match.

For example, if a German company applies to register the Australian trade mark "BLUE MOUNTAIN TECHNOLOGIES", it could potentially register:

• bluemountaintechnologies.com.au
• bluemountaintechnologies.net.au
• bluemountaintechnologies.au

However, that trade mark would not ordinarily establish eligibility for:

• bluemountain.com.au
• bmt.com.au
• bluemountaintec.com.au

These domain names do not correspond exactly to the words of the trade mark.

Foreign businesses should therefore consider their preferred Australian domain names before filing a trade mark application.

Where a shorter or alternative domain name is commercially important, a separate Australian trade mark application may be appropriate, subject to the usual registrability requirements.

Is a Pending Australian Trade Mark Application Sufficient?

Yes. A foreign business does not necessarily need to wait until its Australian trade mark has been registered.

A pending Australian trade mark application can satisfy the Australian Presence requirement, provided its status is recorded as "published" or "accepted" on IP Australia's trade mark database.

This can be particularly advantageous for businesses preparing to enter Australia, as it allows them to secure an available domain name before the trade mark registration process has been completed.

However, filing an application does not guarantee registration of the trade mark or permanent eligibility for the domain name.

If the trade mark application is subsequently refused, withdrawn or otherwise ceases to qualify, the business may lose its basis for satisfying the Australian Presence requirement unless it has another recognised connection to Australia.

It is therefore important to assess the registrability of the proposed trade mark before relying on it to secure an Australian domain name.

How to Register an Australian Domain Name Using a Trade Mark

Foreign businesses can generally follow four steps.

1. Check domain name availability

Confirm whether the preferred .com.au, .net.au or .au domain name is available. An Australian trade mark application does not automatically reserve the corresponding domain name.

2. Conduct an Australian trade mark search

Identify potentially conflicting trade marks before filing. The availability of a domain name does not necessarily mean that the corresponding brand can lawfully be used in Australia.

3. File an Australian trade mark application

Apply to IP Australia for the relevant trade mark, ensuring that the proposed domain name satisfies the applicable exact-match requirement.

A word trade mark generally provides the clearest basis for demonstrating eligibility. However, a composite trade mark incorporating words and figurative elements may also qualify, provided the proposed domain name satisfies the exact-match requirement.

4. Register the domain name

Once the trade mark application qualifies under auDA’s rules, register the available domain name through an accredited registrar using the relevant trade mark details.

Businesses must continue to satisfy the eligibility requirements throughout the domain name licence.

Can a Trade Mark Help Recover an Existing Domain Name?

An Australian trade mark does not automatically entitle its owner to a corresponding domain name already registered by another party.

However, trade mark rights may support a complaint under the .au Dispute Resolution Policy (auDRP), particularly where the existing registrant lacks rights or legitimate interests and the domain name was registered or subsequently used in bad faith.

The outcome depends on the relevant circumstances, including the registrant's existing rights.

For this reason, foreign businesses should consider trade mark and domain name availability together, ideally before launching their brand in Australia.

How IP SERVICE INTERNATIONAL Can Assist

Registering an Australian domain name through an Australian trade mark application can provide foreign businesses with an efficient alternative to establishing a local corporate presence.

However, choosing the appropriate trade mark and domain name requires careful consideration of eligibility, registrability and existing third-party rights.

IP SERVICE INTERNATIONAL assists international businesses with Australian trade mark applications, clearance searches and coordinated trade mark and domain name registration strategies.

Contact our experts Max Steinhausen and Quentin Dequiret for advice on securing an Australian domain name and protecting your brand in Australia.