There are a number of due diligence processes that you can undertake before you purchase a .au domain name. This can reduce the risk of unpleasant surprises later.
Some of these checks are critical and could help you avoid potential liabilities and expenses in the future, such as defending legal actions taken against you or your business.
If you are looking to register a .au domain name or buy one on the aftermarket, it is important that you consider whether this might infringe on an active trademark.
You can search the database of pending, active and expired Australian trademarks on the IP Australia website. You may also wish to look at international trademarks, using sites such as Trademarkia and the United States Patent and Trademark Office (USPTO).
Trademarks allow businesses to distinguish their goods and services from others and are enforceable under intellectual property (IP) law. They can offer IP protection for business logos, business names, slogans and many other applications.
Trademarks can apply to specific words or phrases, or they can be composite trademarks that include a number of elements, such as images and words (a business logo for example).
Trademarks apply to one or more ‘classes’ and typically specify one or more ‘goods and services’ for each class.
For example, an Australian trademark may apply to Class 36, which relates to ‘insurance; financial affairs; monetary affairs; real estate affairs‘. The trademark may then specify the following goods and services within that class: ‘Provision of information relating to real estate‘.
Trademarks will often specify a number of classes and goods and services.
Domain names and trademarks – a fictional example
If a word or term used in your domain is contained in active trademarks, this does not necessarily mean that you are infringing on a trademark by using the domain.
I will use the domain ‘Soothing.com.au’ as an example.
Generic terms – a safer bet
‘Soothing’ is a common word that is used across a range of industries, products and services – it is not a word that is used exclusively in reference to a particular business, product or service (e.g. ‘Google’ is such a word).
For this reason, it would be difficult for a business to successfully trademark the word ‘Soothing’.
Active Australian trademarks containing the word ‘Soothing’ all include additional words or are composite trademarks (e.g. logos).
The generic nature of the word greatly reduces the likelihood of trademark infringement.
Even if there was a trademark for the exact word (‘Soothing’), it may be that the trademark applies to a class or classes that are unrelated to the manner in which the domain is used (e.g. the goods or services offered).
For example, this fictional trademark for ‘Soothing’ may apply to class 35 (‘Advertising; business management; business administration; office functions‘), however the domain may be used as an ecommerce website for luxury bath products with the brand name ‘Soothing’.
In this fictional scenario, it is highly unlikely that the use of the domain Soothing.com.au would be considered a trademark infringement.
If you are looking to use a .au domain for your brand, it can be useful to determine if the term or word in your domain is actively used by another business (or businesses), as this could create confusion for your target market, perhaps even resulting in loss of business to a competitor.
Australian Business Numbers
Australia businesses are required to have an Australian Business Number (ABN).
The ABN Lookup service allows you to search the Australian Business Register (ABR), which contains details of all registered ABNs, including the business names associated with ABNs.
Most Australian businesses are required to register a business name.
The Organisation & Business Names search allows you to search the register of business names (including removed and deregistered names).
It should be noted that registering an Australian business name does not provide exclusive use of that name, only trademarks can offer that protection. A business name registration also does not provide any entitlements to a corresponding .au domain name.
.au Domain Administration (auDA) policies
There are a number of policies that apply to the registration and use of .au domains. Contravening these policies can mean the loss of your domain.
The Reserved List details words, phrases, names and abbreviations that cannot be used in open .au second level domains (com.au, net.au, org.au, asn.au and id.au).
There are limited circumstances under which you can use a domain that is captured by this policy. In most cases, auDA will revoke the domain name licence and delete the domain name.
It is therefore in your interests to avoid registering or purchasing a domain that contravenes this policy. There are exceptions to the rule, but generally speaking the end result will not be a positive one.
The Reserved List is also available in PDF format here.
The Prohibition on Misspellings Policy includes details of the type of .au domains that auDA may regard as prohibited misspellings.
The policy aims to “preserve the integrity of the .au domain space by discouraging “typosquatting”, whereby a person deliberately registers a misspelling of a popular domain name in order to divert trade or traffic“.
History – skeletons in the closet
How a domain was used in the past can affect its value today.
For example, if the domain you are looking to purchase was given a heavy penalty in Google for low quality content or distributing malware, then its value to you may be greatly diminished. Effectively using the domain for your business could require significant expenses in order to repair the reputation of the domain.
There are a number of tools available to determine how a domain was used in the past. I discussed many of these tools in detail recently: Gathering domain intelligence: domain detective tools.
Below are some additional tips on determining whether a domain has been penalised by Google:
- Google Webmaster Tools Help – Manual Actions
- Matt Cutts Explains How To Avoid Buying A Domain That Has Been Penalized By Google
There are also tools available to determine what backlinks (inbound links) a domains has. Search engines take link quality and quantity into account when ranking sites in their search results. Lots of links from low quality sites can be very detrimental.
Here are two of the most popular tools for analysing backlinks:
Ahrefs (one free search per day for unregistered visitors)
There are a number of databases, such as Spamhaus, that contain records of domain names responsible for sending emails that could be considered spam.
Webhosting providers, email service providers, and many others will often utilise these blacklist databases in order to block emails sent from domain names that are flagged for sending spam.
In most cases, it is fairly easy to have a domain removed for these blacklists. However, a domain being recorded in the first place may ring alarm bells, as it can indicate previous use that may have damaged the reputation of the domain.
Malicious site blacklists
Just as there are databases of domains responsible for spamming our inboxes, there are also lists of domains that have been linked with malicious activities and therefore may pose a security risk.
This can result in visitor access to a website being blocked by internet browsers, search engines or antivirus software. This could present a serious problem if you wish to establish a website on a domain that is flagged for malicious activity.
The fine print
The contents of this article do not constitute legal advice. The article is provided for general information purposes only.
For legal matters you should consult a legal professional.