DECISION

 

Gibbs Tavern Associates, LLC v. Mitchell Gorshin / Gorshin

Claim Number: FA2601002200938

 

PARTIES

Complainant is Gibbs Tavern Associates, LLC ("Complainant"), represented by Kate Sherlock of Archer & Greiner, PC, New Jersey, USA. Respondent is Mitchell Gorshin / Gorshin ("Respondent"), represented by Thomas H. Kelly of Wilftek, LLC, Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gibbstavern.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Luz Helena Villamil Jimenez as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 21, 2026; Forum received payment on January 21, 2026.

 

On January 21, 2026, GoDaddy.com, LLC confirmed by e-mail to Forum that the <gibbstavern.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

 

On January 22, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2026 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@gibbstavern.com. Also on January 22, 2026, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on February 11, 2026.

 

On February 12, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Luz Helena Villamil Jimenez as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant argues that Gibbs Tavern Associates, LLC owns a historic building known as Gibbs Tavern located at 127 Kings Highway East in Haddonfield, New Jersey (the "Building"), and the common law trademark GIBBS TAVERN (the "Trademark"). Complainant adds that Federal registration of a mark with the USPTO is not required to support a domain name complaint under the Policy and also contends that Gibbs has owned the Building and used the Mark in connection with its preservation and residential and commercial leasing services since 1983.

 

Complainant also contends that the Disputed Domain is confusingly similar to Complainant's Mark because it wholly incorporates the Mark and merely adds the ".com" generic top-level domain ("gTLD"). By incorporating Complainant's Mark in the Disputed Domain, the Disputed Domain is likely to cause confusion, cause a mistake, or deceive as to the Respondent's affiliation with, or as to the origin, sponsorship, or approval of the Disputed Domain by Gibbs in violation of the Lanham Act and in violation of the Policy.

 

Complainant adds that Respondent has no rights or legitimate interests in the Mark or the Disputed Domain. Gibbs has not licensed or otherwise permitted Respondent to use the Mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to GIBBS TAVERN. Respondent is a former tenant of the Building. Respondent is not commonly known by the Disputed Domain. Respondent is known to Complainant, and his name is Mitchell Gorshin.

 

Lastly, the Complainant asserts that Respondent has registered and is using the Disputed Domain in bad faith because Respondent registered the Disputed Domain without any rights or legitimate interests in the Mark and then offered to sell it to Complainant for $10,000.00. Further, Respondent had actual knowledge of Complainant and Complainant's rights in the Mark when it registered the Disputed Domain in May 2025, which further demonstrates Respondent's bad faith under Policy ¶ 4(a)(iii).

 

B. Respondent

To start, Respondent states, inter alia, that Complainant has failed to articulate a claim under the Policy because it has not demonstrated ownership of the GIBBS TAVERN trademark. Complainant seeks to use this Proceeding in violation of the Policy and Rules to unjustly obtain the <gibbstavern.com> domain from Respondent. Complainant has failed to produce even a single piece of evidence showing that it has used the GIBBS TAVERN name as a trademark. In fact, Complainant's only specious claim to anything close to ownership of the GIBBS TAVERN trademark is that it has physical ownership of a building that once housed an establishment known as "Gibbs Tavern."

 

Respondent also concedes that Complainant does not need to demonstrate ownership of a federal trademark registration under the Policy. However – he adds- the reason for its lack of a registered mark is obvious - it cannot provide any evidence of use of the GIBBS TAVERN mark in this Proceeding and could never hope to provide the substantial evidence necessary to demonstrate acquired distinctiveness under the United States Patent and Trademark Office rules.

 

Respondent contends that he has a legitimate right or interest to the <gibbstavern.com> domain. As part of Respondent's business activities, he has created and developed concepts for international hotel brands, restaurant groups, and world-class entertainment companies, such as The Walt Disney Company. Respondent had several intended uses for the <gibbstavern.com> domain name, some of which are underway at this moment, and Respondent has also commenced work on a series of stories (both fiction and non-fiction) about the historic Gibbs Tavern and its past and current tenants. Respondent was not merely "a former tenant in the Building" as the Complaint states. Respondent was a tenant in the Gibbs Tavern building for over a decade. The <gibbstavern.com> domain name was registered while Respondent was a tenant in the historic Gibbs Tavern building.

 

Lastly, Respondent explains that Respondent's offer to sell the <gibbstavern.com> domain name to Complainant is not evidence of bad faith. Courts – he adds- have long held that the buying and selling of domain names is lawful commerce. The cases cited in the Complaint are distinguishable from the present case. Most obviously because Complainant has not established any ownership of the GIBBS TAVERN mark, but also because Respondent had both at the time of registration and now, a legitimate reason to acquire the domain.

 

FINDINGS

The Panel has thoroughly reviewed the Complaint together with the evidence submitted to support the allegations and the Response to the Complaint, and based on all the documents the Panel finds:

 

-       That Gibbs Tavern is a historic building located at 127 Kings Highway East in Haddonfield, New Jersey (the "Building").

 

-       That the Complainant submitted two documents marked as evidence of use of the trademark GIBBS TAVERN ("screenshot from Complainant's Website displaying use of the Mark", and "Screenshots from third-party websites referencing Mark").

 

-       That Respondent was a tenant in the Gibbs Tavern building for over a decade, and the <gibbstavern.com> domain name was registered while Respondent was a tenant in the historic Gibbs Tavern building.

 

-       That the offer to sell the <gibbstavern.com> domain name to Complainant is not in itself evidence of bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

There is no discussion as to the fact that the name of the building GIBBS TAVERN is identical to the domain name <gibbstavern.com>.

 

The problem arises in connection with Complainant's claim that the name GIBBS TAVERN is a trademark, with everything that entails—namely, the fact that a trademark is a sign used in trade to identify products or services in the market as originating from a specific source, and to distinguish those products or services from those of its competitors. From the documentation submitted with the Complaint it is clear that GIBBS TAVERN does not reach the condition of a mark or a trademark, inasmuch as it is only the name of a building. In other words, the name GIBBS TAVERN lacks what is required to constitute a trademark, and consequently, it does not meet the requirements for protection as such either.

 

In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(i) is NOT met regarding the fact that the disputed domain name <gibbstavern.com> is confusingly similar to a trademark in which Complainant has rights.

 

Since in the present case the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent's rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

REVERSE DOMAIN NAME HIJACKING

Respondent alleges in its Response that Complainant has engaged in Reverse Domain Name Hijacking, by instituting this Proceeding knowing that it would not be able to make the showings required by the Policy. See, UDRP Rule 15(e).

 

Rule 1 defines as Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."  From all allegations and proofs submitted by the parties, the Panel concludes that Complainant, while knowing or having reason to know that it could not succeed in proving all of the required elements of its case, in any case commenced and prosecuted this proceeding, and therefore, has engaged in Reverse Domain Name Hijacking.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <gibbstavern.com> domain name REMAIN WITH Respondent.

 

 

 

Luz Helena Villamil Jimenez, Panelist

Dated: February 26, 2026