DECISION

 

Roboflow, Inc. v. Yash Maheshwari

Claim Number: FA2504002149648

 

PARTIES

Complainant is Roboflow, Inc. ("Complainant"), represented by Casey E. Wright, of Barnes & Thornburg LLP, Indiana, USA. Respondent is Yash Maheshwari ("Respondent"), represented by Igor Motsnyi, of Motsnyi IP (dba Motsnyi Legal), Serbia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <roboflowsystem.com>, registered with Gandi SAS.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 9, 2025; Forum received payment on April 9, 2025.

 

On April 10, 2025, Gandi SAS confirmed by e-mail to Forum that the <roboflowsystem.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 April 10, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2025, 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@roboflowsystem.com. Also on April 10, 2025, 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 April 29, 2025.

 

On April 29, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey M. Samuels 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 Roboflow, Inc. is a leading provider of computer vision solutions, empowering developers to build and deploy applications efficiently. Complainant serves over 800,000 engineers globally, impacting various industries, such as security, healthcare, and retail.

 

Complainant owns trademark registrations in the United States (Registration No. 6898004), the European Union (Registration No. 018527512), and the United Kingdom (Registration No. UK00003677238) for the mark ROBOFLOW, and has used the mark at least as early as February 2020. Each of the above-referenced registrations issued sometime in 2022. Complainant filed an application for registration of the ROBOFLOW mark in India on December 10, 2024, and has also filed applications in China seeking registration of the mark.

 

Complainant also alleges that it owns extensive common law rights in its ROBOFLOW mark insofar as it "has invested substantial resources developing, advertising, promoting, and marketing its goods and services … across the globe."

 

Complainant owns a registration for the <roboflow.com> domain name.

 

Complainant asserts that the disputed domain name, <roboflowsystem.com>, is confusingly similar to its ROBOFLOW trademark. It notes that the disputed domain name wholly incorporates the ROBOFLOW trademark, adding only the descriptive term "system" and a generic gTLD.

 

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant maintains that Respondent is not, and has never been, a licensee of Complainant and Complainant has not authorized Respondent to use any version of the ROBOFLOW mark for any purpose.

 

Complainant further asserts that there is no indication that Respondent is commonly known by or referred to by the disputed domain name. Complainant also indicates that Respondent is not engaged in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, pointing to the fact that the domain name directs to a webpage that prominently displays the ROBOFLOW mark with references to "AI Innovations." Upon information and belief, Complainant asserts that "Respondent is using the Disputed Domain Name to impersonate Complainant or an authorized partner of Complainant by hosting a fake website displaying the ROBOFLOW Marks and advertising unauthorized services related to Complainant's servicers."

 

Complainant also refers to the fact that Respondent did not register the disputed domain name until February 15, 2024, which is several years after Complainant adopted the ROBOFLOW mark. "This establishes that Respondent had no rights or legitimate interest in the Disputed Domain Name."

 

Finally, Complainant indicates that Respondent failed to stop using the ROBOFLOW mark in the disputed domain name, and in the content on the resolving website, despite receiving a cease-and-desist letter from Complainant. According to Complainant, Respondent failed to reply to the cease-and-desist letter and to repeated follow-ups.

 

With respect to the issue of "bad faith" registration and use, Complainant asserts that "[b]y using a domain name that is confusingly similar to Complainant's registered ROBOFLOW Marks, it is clear that Respondent registered the Disputed Domain Name primarily for the purpose of deceiving consumers as to the source, sponsorship, affiliation, or endorsement of Respondent's Website and thereby disrupting Complainant's business. Indeed, this shows that Respondent registered the Disputed Domain Name with actual knowledge of Complainant's marks – the website clearly displays and promotes the registered ROBOFLOW Marks."  

 

Complainant further contends that Respondent's website advertises goods that are identical or highly similar to Complainant's and that this "constitutes per se evidence that Respondent knows of Complainant's goods, services, and intellectual property rights, and registered the Disputed Domain Name to tread on Complainant's goodwill."

 

Complainant also alleges that, at the time Respondent registered the disputed domain name, the ROBOFLOW mark was distinctive and registered throughout the world, "so as to give constructive, if not actual notice, to Respondent that the registration of the Disputed Domain Name at issue would violate Complainant's rights." Complainant asserts that Respondent "clearly had prior knowledge of Complainant's trademark rights when it registered the Disputed Domain Name" and that Respondent's use and registration of the disputed domain name with actual or constructive knowledge of Complainant's rights in the ROBOFLOW mark is evidence of the requisite bad faith registration and use.

 

Complainant also points to Respondent's failure to respond to the cease- and-desist letter as further support of bad faith registration and use.

 

B. Respondent

Respondent is an entrepreneur from India operating his own small IT business under the name "RoboFlow System." Respondent specializes in website development and development of chatbot solutions.

 

Respondent "does not question that the disputed domain name is confusingly similar to the US, the EU and the UK trademark registrations of Complainant." It notes, however, that the domain name is not identical to the ROBOFLOW trademark insofar as it includes the term "system" and that the addition of such term bears on assessment of the issues of rights or legitimate interests and "bad faith" registration and use.

 

Respondent also does not question Complainant's rights in the ROBOFLOW mark, as evidenced by its ownership of registrations in the US, EU, and UK. It points out, though, that Complainant's trademark applications in India and China were filed after the date of registration of the disputed domain name. Respondent further contends that while Complainant alleges that it owns extensive common law rights in the ROBOFLOW mark, it "fails to provide any evidence of common law trademark rights in the term 'Roboflow'."

 

Respondent claims that it has rights or legitimate interests in the domain name in dispute. Respondent asserts that, before any notice of this dispute, he has been using the disputed domain name in connection with a bona fide offering of services, that such use is genuine, that he did not target Complainant, and that he is not taking unfair advantage of Complainant's trademark. According to Respondent, he never copied any portion of Complainant's website and has never made any claim of affiliation with Complainant. "Respondent was not aware of Complainant prior to commencement of this UDRP dispute."  

 

Respondent emphasizes that "[t]he mere existence of Complainant's trademark rights in the US, EU, and the UK is not sufficient to negate Respondent's legitimate interest and demonstrate Respondent's bad faith." Respondent notes that Complainant did not provide any evidence why Respondent, based in India, should have been aware of Complainant based on its registrations in the US, EU, and UK. Respondent submits that Complainant and its ROBOFLOW mark is not famous or well-known in the IT industry.

 

Respondent further contends that he is not using the ROBOFLOW mark as such, as his business identifier is RoboFlow System, the choice for such name being motivated by a combination of elements robo+flow+system and there is no evidence that such word combination is associated only or primarily with Complainant.

 

Respondent rejects Complainant's assertion that the parties offer competing services. Moreover, even if there is some overlap, such fact does not negate a determination that Respondent has rights or legitimate interests in the disputed domain name.

 

Finally, Respondent indicates that he never received a cease-and-desist letter from Complainant.

 

On the issue of "bad faith" registration and use, Respondent asserts that the present dispute is not related to an abusive registration and, therefore, does not belong in UDRP. "Respondent is involved in the operation of a genuine business that does not claim any affiliation with or endorsement with Complainant and as such Respondent's behavior does not constitute bad faith under the UDRP."

 

There is no evidence of targeting in this case, Respondent declares. Respondent maintains that there is no evidence of his actual knowledge of Complainant's trademark.  "If the respondent is unaware of the existence of the trademark owner, he/she cannot sensibly be regarded as having any bad faith intentions directed at complainant."

 

Respondent submits that there is no evidence that Complainant's ROBOFLOW mark is distinctive in a market sense as there is no evidence of its actual use, the jurisdictions, including India, where the mark is actually used, the extent of such use, any consumer recognition, any media publications, etc.

 

Respondent further notes that the term "Roboflow" is used by a number of third parties unrelated to Complainant and is the subject of a number of third-party trademark registrations, including those that include goods/services in classes covered by Complainant's registrations. A third party even owns a registration for the domain name <roboflowsystems.org>. Thus, Respondent asserts, Complainant cannot claim that "roboflow" is only associated with Complainant and that its ROBOFLOW mark is so famous worldwide that everyone should know it and that Respondent targeted Complainant.

 

Finally, Respondent adds, to the extent Complainant attempts to allege a trademark infringement claim in its Complaint, in particular arguing similarity of services, "this is irrelevant under the UDRP." 

 

FINDINGS

The Panel finds that (1) the disputed domain name is confusingly similar to the ROBOFLOW trademark; (2) Complainant has rights in such mark; (3) Respondent has rights or legitimate interests in the disputed domain name; (4) the disputed domain name was not registered and is not being used in 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

The Panel finds, as Respondent concedes, that the disputed domain name is confusingly similar to the ROBOFLOW trademark. The disputed domain name incorporates the mark in full, adding only the non-distinctive term "system" and the generic ".com" gTLD.

 

The Panel further finds that Complainant, through its ownership of registrations for the ROBOFLOW mark in the US, EU, and UK, has rights in the mark. The fact that Complainant does not own a registration for ROBOFLOW in India, Respondent's home country, does not defeat a determination under the UDRP that Complainant has rights in the mark – and I do not understand Respondent to be arguing to the contrary.

 

Rights or Legitimate Interests

Respondent submitted a Declaration as part of his Response. In it, he makes the following points:

 

1.       That he is an entrepreneur with previous experience as a chatbot developer and his main activity is website development and development of chatbot solutions, including AI chatbots. He has not yet set up a company but plans to do so soon.

2.       He chose the domain name "RoboFlow System" because it reflects and describes his business and his approach to business, noting that "robo" is a short form of "robotic," that "flow" means to proceed smoothly and readily, and that the combination of these words, in addition to the term "system," sends a message to customers that we operate smoothly and readily with robotic precision as a single unit or system.

3.       He was not aware of Complainant and its trademark or any other ROBOFLOW or RoboFlow System marks.

4.       He only became aware of Complainant after he received the Complaint in this matter.

5.       He never intended to target any existing business and was not aware of any business using the term "RoboFlow" or "RoboFlow System" and registered the disputed domain name because it corresponds to his business name.

6.       He never received a cease-and-desist letter from Complainant.

 

The Panel concludes that the case file establishes that, prior to any notice to Respondent of this dispute, Respondent was using the disputed domain name in connection with a bona fide offering of goods or services, under paragraph 4(c)(i) of the Policy. While Respondent does not have a registered company yet, his Declaration, when viewed in connection with the <roboflowsystem.com> website, indicates he is engaged in a bona fide offering of goods or services, including development of chatbot solutions. 

 

Here is some text from Respondent's website, as set forth in Annex 2 to the Response:

 

As the Founder and CEO of RoboFlowSystem, I am committed to driving innovation and excellence in AI and automation. With a deep passion for technology and a focus on empowering businesses, I lead our team to develop cutting-edge chatbot solutions that enhance efficiency and user engagement. My mission is to create impactful AI solutions that help our clients streamline operations and unlock new opportunities for growth in an ever-evolving digital landscape.

 

While Complainant alleges that Respondent's website prominently features Complainant's ROBOFLOW trademark, the Panel's review of the website does not support such allegation. Respondent's website does not use the term "ROBOFLOW" alone. Instead, it is used as part of the "roboflowsystem" domain name.

 

Registration and Use in Bad Faith

The Panel concludes that the disputed domain name was not registered and is not being used in bad faith. As noted only a few weeks ago in the three-member panel decision in Renu Medispa LLC v. Angela Sattler/Aesthetics, FA 2143814 (Forum, April 28, 2025) a foundational question under this element of the policy is whether or not Respondent had knowledge of Complainant or its claimed trademark at the time it registered the disputed domain name. See, also, USA Video Interactive Corporation v. B.G. Enterprises, WIPO Case No. D2000-1052 (claim denied where "Respondent registered and used the domain name without knowledge of Complainant"). Absent such knowledge, it cannot be held that Respondent, in registering and using the disputed domain name, intended to target Complainant and absent an intent to target, bad faith cannot be found under the Policy.

 

Respondent, in his Declaration, submits that he was not aware of Complainant prior to the filing of the Complaint and there is no evidence, in contrast to argument, to the contrary. To the extent Complainant relies on its registrations in the US, EU, and UK to advance an argument of constructive knowledge, it is well established as a general principle under the UDRP that constructive knowledge is insufficient to support a finding of the requisite knowledge to support a determination of bad faith registration and use. See SIdePrize, LLC d/b/a Prize Picks v. Copamar Partners/Copamar Partners, S.L. FA 2141536 (Forum March 19, 2025).

 

The Panel notes that Complainant's application to register its ROBOFLOW mark in India is still pending. Complainant alleges, though, that it has used the ROBOFLOW mark since at least as early as February 2020¹, and that it owns "extensive" common law rights in its mark, which, according to Complainant, is "inherently distinctive and commercially strong." However, there is little in the record that speaks to the traditional criteria relied upon to establish common law rights under the Policy or which can form a basis to determine that ROBOFLOW is "commercially strong," such as sales, the nature and extent of advertising, media coverage, etc. And, more to the point, there is no evidence, or even argument, relating to the extent of any market penetration of Complainant's ROBOFLOW mark in India, Respondent's home country or, even more to the point, given the geographic breath of India, in Delhi, where Respondent apparently resides or works. While Complainant asserts that it serves over 80,000 engineers globally, there is no evidence as to how many, if any, of its customers reside in India.

 

Thus, Respondent's assertion that he never intended to target any existing business, was not aware of any business using the term "RoboFlow," and registered the disputed domain name because it corresponds to his business name appears credible, especially given the fact that there is evidence of some third-party use of the ROBOFLOW mark and Respondent's descriptive use of the "RoboFlow" term.

 

Further, the fact, if it is a fact, that the parties market competing products does not support a determination that the disputed domain name is being used in bad faith, absent a finding of awareness or targeting. The Policy is not designed to provide a venue to determine claims of trademark infringement.

 

In sum, the record in this matter does not establish that the disputed domain name was chosen and used with prior knowledge of Complainant's mark and to target Complainant's business in bad faith.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

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

 

 

 

Jeffrey M. Samuels, Panelist

Dated: May 12, 2025