Operators of WorldStarHipHop, which for years built its brand based on videos of rappers engaging in fights with other rappers and public sexual acts, contended in its claim at WIPO that the adult tube site WorldStarPorn.net's domain name was confusingly similar to its own and had sought to take it over.
An arbitrator, however, disagreed last month with the operators of the mainstream site, primarily because they hadn't met an important test in the case to prove any likely confusion with surfers: The website's operators couldn't prove any trademark registration for the use of the "world star" term.
WorldStarPorn.net, operated by New Jersey-based Maneface Inc., provides explicit tube site content of particular interest to those who seek out urban women and those with big booties.
WorldStarPorn.net's website says it associates itself with about 15 additional URLs that use "world star" in porn domain names, including WorldStarXXX.com.
A spokesman for the company, Jermaine, said that WorldStarHipHop's operators "tried hard but in the end had no right to claim ownership of the term WorldStar in adult entertainment."
"We own the largest ebony niche sites doing well over millions of impressions on a daily basis but not anywhere near what WorldStarHipHop does," Jermaine told XBIZ. "So it was the old story of David and Goliath. We went through a crazy-long drawn out process of them threatening us. And finally it's over and we have our victory."
Jermaine noted that Maneface, which did not formally respond to the cybersquatting claim before a WIPO arbitrator, does hold a trademark for "WorldStar" for uses involving adult entertainment — one that, according to the U.S. Patent and Trademark Office, shows being filed on Oct. 31.
"Obviously we operate adult sites, and they operate on a mainstream-only basis," he said. "But they literally are not even in our market so that we could not understand so we had to fight.
"We have copy-cats ourselves in the adult industry, and we haven't taken legal action to subdue them yet. We just don't feel it's necessary right now nor really have the time. So we could understand why they were upset because we go through the same stuff every day."
The defeat for WorldStarHipHop.com and its parent company LO 337 IP Holdings LLC comes after a string of wins at WIPO over cybersquatting claims involving those with the names WorldStarSouth.com, WorldStarDirtySouth and WorldStarMexico.com. The company in each of the cases said it had a common law trademark for "world star" and a registered trademark for "world star hip hop."
WorldStarHipHop.com, which also has its own hip-hop clothing line and urban shop, is an Internet wonder, currently ranking No. 250 in the U.S., according to Alexa.
It likely will become even more well known in coming years. In August, Deadline reported that Paramount Pictures was working on a movie based on WorldStarHipHop.com.