Decision for dispute CAC-UDRP-107286

According to the record, there are numerous pending disputes between the parties including:

• Opposition of the Respondent’s German TM No 302024004285 CANNgo, opposition filed February 17, 2025;
• Opposition of the Respondent’s German TM No 302024230901 CANNGO, opposition filed February 17, 2025;
• Applications for Preliminary Injunctions against the Respondent’s use of the CANNGO sign - Hamburg District Court, decisions of the court in favour of the Complainant are included as evidence with the Complaint at Annex 10 (Az.: 312 O 374/2), Annex 12 (Az.: 312 O 374/2) Annex 13 (Az.: 312 O 414/2). The Respondent contends that appeals have been filed against these preliminary injunctions.
• According to the Respondent, a full case (Az.: 312 O 376/24) was filed by the Complainant against both trademarks mentioned below. The Respondent asserts that, as such, the validity of the Complainant’s claim to the company sign CANNGO is currently still in dispute.

The Complainant makes no claim to registered trademark rights in the term CANNGO. The Complainant asserts that its operation under the business name CANNGO is protected under Section 5 of the German Trademark Act.

The Respondent claims the following registered trademark rights:

 The Complainant asserts that both of the registered trademarks mentioned above are currently subject to cancellation proceedings.

FACTS ASSERTED BY THE COMPLAINANT:

The Complainant, a Polish company operating in the German medical cannabis market under the business name "CANNGO," claims rights over the same name under Section 5 of the German Trademark Act. The Complainant offers telemedical consultations, prescriptions for medical cannabis, and pharmacy orders through its platform at "https://canngo.express," which has been operational since March 28, 2024.

The Respondent operates a competing medical cannabis platform through the Maltese company Dr. Ansay Ltd. The Respondent was aware of the Complainant’s use of the domain and business name since April 5, 2024 at the latest. The Respondent acquired the disputed domain name on October 18, 2025.

The Complainant alleges that since August 2024, the Respondent has engaged in various anti-competitive actions. The Respondent also sent disparaging e-mails to pharmacies working with the Complainant, accusing illegal conduct and threatening legal consequences. These actions led to injunctive relief being granted by the Hamburg Regional Court, prohibiting the Respondent from using the CANNGO term and engaging in misleading activities.

The Respondent attempted to register two separate trademarks for "CANNGO" with the German Patent and Trademark Office, both of which were challenged and which are currently subject to pending cancellation proceedings.

On November 11, 2024, the Respondent initiated UDRP proceedings against the Complainant in CAC-UDRP-Case No. 107033 concerning the Complainant’s domain name <canngo.express>. The 3-member panel in that case dismissed the Respondent’s claim and found that the complaint was filed in bad faith in an abuse of the UDRP process.

The Complainant argues that the Respondent’s registration of the disputed domain name constitutes bad faith domain grabbing. The website does not provide unique content or services but instead redirects users to the Respondent’s other platforms. This, the Complainant claims, is an attempt to exploit the popularity and reputation of "CANNGO" to mislead users and divert business.

Under German law, the Complainant asserts its rights over the "CANNGO" name and domain based on continuous and significant use in trade, high market penetration, and consumer recognition. The company’s platform has gained substantial media coverage and consumer engagement, strengthening its claim to ownership of the name.

Ultimately, the Complainant seeks the transfer of the disputed domain name on the grounds that the Respondent lacks legitimate interests in the name and has engaged in bad faith registration and use.

FACTS ASSERTED BY THE RESPONDENT:

The Respondent asserts legitimate rights and interests in the disputed domain name based on two registered trademarks (CANNgo and CANNGO) applied for respectively 6 months and two months prior to the disputed domain name's registration on October 18, 2024. The Respondent argues that the Complainant lacks an unregistered right to "Canngo" under German law, as it is not the official business name of the Complainant's company, Equiom Capital Invest. An unregistered right to a “company sign” under German law can only arise a) for the name of the company or b) for an independent “subsidiary” of a company, meaning a branch of the company's business that is perceived by the public as differing from other business endeavors of a company.

The Respondent denies bad faith registration, highlighting that no final court ruling in Germany has determined ownership rights over "Canngo." Existing preliminary injunctions favoring the Complainant did not require full proof to reach such decisions, and appeals are pending.

The Respondent asserts that the Complainant misrepresents the relationship between the parties, the Complainant having filed multiple lawsuits against the Respondent, while a company founded by the Respondent has initiated only one against the Complainant.

Further, the Complainant’s platform (<canngo.express>) was built by former employees of the Respondent’s company, allegedly while still employed, and is a copy of the Respondent’s platform, <canation.com>.

Additionally, the response states that the Complainant’s claimed rights arise later than the Respondent’s trademarks, making the Respondent’s rights superior. The Respondent argues its acquisition of the "CANNgo" trademark from the original applicant was lawful and does not constitute bad faith under German or EU trademark law.

As procedural matter, the Respondent claims that the Complainant’s submission of certain annexes in German without translations constitutes procedural deficiency that results in failure by the Complainant to meet its burden of proof.

Thus, the Respondent seeks dismissal of the Complaint, emphasizing the Respondent’s prior trademark rights, absence of bad faith, and procedural deficiencies in the Complainant’s claims.

See above. 

The Panel declines to issue a decision on the merits due to pending litigation between the parties central to this dispute.

The Panel declines to issue a decision on the merits due to pending litigation between the parties central to this dispute

The Panel declines to issue a decision on the merits due to pending litigation between the parties central to this dispute.

The language of the proceedings is English, the Complainant, however, provided several of the Annexes in the German language only. Under standard circumstances, the Panel would dismiss such evidence or request translation into the language of the proceedings. However, the Panel has been able to review the content of this evidence, and it is apparent from the Respondent’s response, that the German language has not been an issue for the Respondent. Therefore, the Panel accepts this evidence as properly submitted. However, the Panel notes, as explained below, that the details of the content of the German language annexes are not dispositive as to the outcome of this case.

ISSUE: DISPUTE OUTSIDE THE SCOPE OF THE POLICY

The Panel determines this dispute falls outside the intended scope of the UDRP. The Policy was established specifically to address cases of cybersquatting, as outlined in paragraph 170 of WIPO’s Final Report (April 30, 1999), which limits its application to instances of "deliberate, bad faith, abusive registration of a domain name in violation of trademark and service mark rights."

ICANN’s adoption of WIPO’s recommendations means that UDRP panelists have limited discretion in what is meant to be a summary proceeding. See, for example, Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201 (“In the present case, the dispute concerning the domain names is merely ancillary to much larger, complex disputes between the parties, involving alleged breaches of contract, breaches of fiduciary duty, and tortious conduct. Indeed, Complainants seek relief in the nature of prohibitory injunctive relief, a type of relief far beyond the limited powers granted to the Panel under the Policy.); Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183 (“Such disputes are more appropriately decided by traditional means, as they turn on questions of fact that cannot be resolved on the basis of the Parties’ statements and documents, and on questions of law beyond the limited scope of the Policy.”). In short, the UDRP was designed to handle clear-cut cases of cybersquatting, see Summit Industries, Inc. v. Jardine Performance Exhaust Inc., WIPO Case No. D2001-1001 (“The claim brought by Complainant relies on contract rights to the trademarks at issue. The contract provision on which Complainant relies is less than clear. It contains no reference to the transfer of trademarks.”).

In this case, the statements and evidence submitted by the parties reveal broader legal disputes concerning the actions of prior employees, unfair competition, trademark rights, usage, and infringement, as well as their legal consequences under national law. While paragraph 15(a) of the Policy directs panels to base their decisions on the submitted statements and documents, the UDRP framework is intended for straightforward disputes and does not typically require complex legal analysis based on national law (see WIPO 3.0, section 4.15). Given the nature of the claims and cross claims, this case extends well beyond the Panel’s limited jurisdiction under the UDRP, which was never intended to serve as a forum for traditional trademark disputes.

ISSUE: OTHER LEGAL PROCEEDINGS BETWEEN THE PARTIES

As noted in the section headed “Other Legal Proceedings” above, the parties to this dispute are engaged in pending legal proceedings before the German courts.

The Rules for the UDRP (the “Rules”), paragraph 18(a) provides:

“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

Core to this present case is the contested issue of the scope of, and priority to, the parties’ rights to the CANNGO sign. Obviously, this is the same sign that the Complainant seeks to rely upon in this instant administrative proceeding. The German court is in a superior position compared to this Panel to make findings of fact and law in this regard. In the context of the limited record available under the UDRP, it is more challenging to adequately examine complex the disputed matters. A panel lacks access to tools available to courts designed to shine light on contested matters such as discovery, oral arguments, cross examination, and the like. See Swisher International, Inc. v. Hempire State Smoke Shop, FA2106001952939 ("[i]n certain cases Panels may [be] not equipped to make fine judgements on the veracity of conflicting statements and such disputes are better suited to resolution through the courts with their more robust evidentiary rules and procedures."). Further see, for example, Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants), WIPO Case No. D2008-1477 (“…comity alone militates in favour of paying deference to the decision of the court where the very issue that is fundamental to this administrative proceeding is to be determined.”).

As such, the Panel finds that the appropriate course in this case is for the Panel to terminate this administrative proceeding pursuant to the Rules, paragraph 18(a), without reflecting any judgment on the merits of either party’s claims. Furthermore, this ruling shall carry no precedential effect in any subsequent legal proceedings. See Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183 and Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201.

DECISION

The Panel hereby orders, pursuant to paragraph 18(a) of the Rules, that this proceeding be terminated. This termination shall be without prejudice to Complainant filing a new complaint under the Policy following the resolution of the pending legal proceedings between the parties.